Trademarks like any asset can be transmitted from one proprietor to another. Such transmission or transfers can arise through assignments, mergers, or amalgamations between two beings. Licensing of a trademark is when a trademark proprietor approves a third party to utilize its mark in return for royalties.
The most notable element to recognize is that ‘licensing’ is not the sale of the trademark or an absolute transfer. The possession of the trademark is maintained by the proprietor or holder and only a restricted right to use, sell commodities under the trademark, etc. are provided to the third party.
Such an application for a new Registered User-made out under:
(a) Under section 49 for a registered user of a registered trademark concerning their goods or services
(b) Under clause (a) of sub-section (1) of section 50 to modify the registered user of one trademark where the trademarks are covered by the same registered user concerning each of them
(c) Under clause (b), (c) or (d) of sub-section (1) of section 50 to cancel the entry of a registered user of one trademark
(d) Under rule 95 (2) with the intent to intercede the proceedings for the difference or cancellation of entries of a registered user of the trademark.
A petition to the registrar for the registration, of an individual as a registered user of a registered mark, can be brought about together by that individual and the registered owner of the trademark in this Form.
Registered Users are distinguished under section 2(V)(x) of the Trademark Act of 1999. As per this section, a registered user is an individual who has been documented under Section 49. Section 48 of the Act 1999 also specifies in detail which is a registered user.
It has been defined as an individual other than the registered owner of a trademark who is registered concerning any, all, or few of the goods or services considering the brand. In other terms, a registered user is an individual other than the owner of the trademark who registers themselves with the Trademark Registry and therefore, is called a Registered User.
Section 48 of the Trade Marks Act, 1999 interpreted along with Section 2(1)(r) of the Act, only pertains to registered users. This was specifically laid down in Exxon Mobil Corporation, and Ors. vs. P.K. Sen. As per the verdict, the usage of the trademark under such circumstances will be deemed to be utilized by the owner.
Section 49 of the Act legislates that the proprietor of the trademark and the proposed user must together apply for the prospective user to become a registered user of the mark. The petition is made through Form TM-U and the agreement between them, i.e., the licensing agreement must be submitted simultaneously.
An affidavit by the owner presenting the details of the license comprising the relationship of the parties, period of usage of the mark, goods, and services for which it will be applicable, etc., must also be provided in the application. It is to be observed that the application has to be prepared within 6mos of the date of the agreement. The authorized fee for creating an online application in this issue is INR 4500 for each mark.
Wherein the Trademark Office finds that everything in the application is satisfactory, it shall register the user as the ‘Registered User’ of the trademark and publish the same in Journal. An intimation of such a transfer is being sent to the original trademark proprietor and additional registered users for the equivalent mark. If the Trademark Office is not convinced, a hearing date is assigned to the parties where they can attempt to rectify the deficiencies and satisfy the Office.
A cancellation request for the status of a Registered User granted to an individual can be rendered in Form TM-U, as well. A cancellation request can be launched by the owner, the registered user, or any additional registered user of the trademark.
The authorized fee for filing an online application for cancellation is INR 4500 per mark and the conditions that are acceptable to make such a cancellation request are:
(a) Violation or breach of the written agreement
(b) Use of trademark as to induce fraud and confusion
(c) Misrepresentation or non-disclosure of certain important information by either of the parties
(d) The conditions have altered after the date of registration in such a manner that at the date of the cancellation request they would not have allowed the registration of the Registered User.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
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