INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions The Trade Marks Act states that if the validity of an assignment is disputed, the TMO has the authority to refuse to register the assignment until the parties’ rights are established by a com - petent court. The assignment or transmission where multiple exclusive rights would be created in more than one person is restricted, as is the separation of rights on a territorial basis and the creation of rights in various individuals in different parts of India. The TMO, on the other hand, has the authority to allow assignment if it is considered to be in the public interest. Where there is an assignment without goodwill of business, it will not take effect unless the assignor obtains directions from the TMO and advertises the assignment as per directions. Fur - thermore, certification trade marks can only be assigned subject to consent of the TMO. Before recording an assignment that involves the transmission of money outside India, the consent of an authority specified in any law for the transmission of money overseas must be produced. Partial Assignment Both trade marks and copyrights in India can be partially assigned, subject to the conditions of clarity, proper documentation, and compliance with statutory requirements. Both copyright and trade mark rights are trans - missible upon the death of the owner.
6.2 Licensing Requirements or Restrictions
In India, licensing can be governed by specific terms under applicable laws, including the Cop - yright Act 1957, and the Trade Marks Act 1999. Below is an overview of licensing requirements, types and important clauses to consider. General Licensing Requirements Trade mark licensing: Registering a licence with the TMO is not mandatory but highly advisable. A registered licence grants the licensee statutory rights of action in case of infringement. Key clauses in a licence agreement include: • Quality control monitoring: Ensures that the licensor maintains quality standards associ - ated with the intellectual property (IP). • Trade mark usage: Specifies the permitted use of the trade mark or copyrighted material. • Grant clause: Defines the scope and nature of the licence. • Indemnity clause: Protects the licensor from liability arising from misuse by the licensee. • Termination clause: Outlines the conditions under which the licence may be terminated. Types of Licences For copyrights (Copyright Act 1957): • Exclusive licence • Non-exclusive licence For trade marks (Trade Marks Act 1999): • Exclusive licence: The licensee has exclusive rights to use the trade mark for the licensed goods or services. The owner cannot use the trade mark or grant licences similar to those of others for the same goods or services.
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