Dr.

RAM MANOHAR LOHIYA NATIONAL LAW

UNIVERSITY, LUCKNOW

2018

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FINAL PROJECT ON “LICENSING AND ASSIGNMENT OF
COPYRIGHTS AND TRADEMARKS”

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SUBMITTED TO: SUBMITTED BY:
MR VIKAS BHATI
VIVASVAN PRAKASH
ASSISTANT PROFESSOR
(LAW) ENROLL NO. : 150101164
SECTION : ‘B’
SEMESTER – VII (III YEAR).
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 ACKNOWLEDGMENT

I would like to convey my sincere thanks to my colleagues, who

painstakingly reviewed most of the content Special thanks, are due to our Learned
Assistant Professor Mr. Vikas Bhati (Law).
I am grateful to my mother for her enormous help in formatting and
verifying the contents of the said project work. I am also thankful to the seniors for
ensuring that project would be well enough to be presented in front of others. I also
acknowledge the contribution of my friends for the editing, proof checking and general
guidance they have provided. This has been invaluable. Finally, I’m indebted to all my
teachers for verifying of the content.
I am also very grateful to the various sources of information, the journals,
magazines and lots of articles which provided me all aspects of information.

2
 TABLE OF CONTENTS

S.NO. TOPIC PAGE

NO.

1. ACKNOWLEDGEMENT…………………………………………………….. ii
.

2. CHAPTER: 1 4-5
INTORODUCTION………………………………………….....

3. 6-11
CHAPTER: 2 TRADEMARKS ACT, 1999...................................................

4. CHAPTER: 3 THE COPYRIGHTS ACT, 1957………………………........... 12-19

5. CHAPTER: 4 CONCLUSION……………………………………………........ 20-23

6. CHAPTER: 5 BIBLIOGRAPHY..................................................................... 24

3
CHAPTER: 1 INTRODCTION

One of the most important challenges for businesses today is to remain profitable in a global
economy. Increasingly, globalization dictates that companies must consider international
markets and how best to leverage off the opportunities that emerging markets offer. With new
opportunities come age old risks of how best to protect IPR whilst making the most of the
existing brand reputation and good will.

India, like several other emerging economies has been notorious for its perceived lack of
adequate Indian laws and apathy of enforcement agencies in ensuring that IPR gets the protection
it deserves. Indian courts however recognize foreign trademarks and trade names and
acknowledge the importance of protecting such IPR. A Supreme Court judgment in 19961 clearly
established that international companies that have an international trademark and enjoy a cross
border reputation outside of India, can protect their IPR in India without the need of having an
actual presence in India.

Protecting intellectual property rights (IPR) in India a few decades ago was a major hitch
preventing companies from seriously considering the Indian market for business. However, with
liberalization, IPR protection has emerged as a key concern for regulators and government and
due attention is being awarded to this issue in India. Over the years, India has gained prominence
in knowledge driven sectors like information technology (IT) and pharmaceuticals, which by
their very nature seek IPR protection.

The thought of responsibility for a development and its security is not new to humankind. To
make a clear distinction of clear process for the prevention of crime over individual attempted
goals will do have a low quality of merchandise creation process in the infringer reassessed.
Taking a trademark process well known that would help in developing a trust in merchandise and
have potential customer process. Taking a point of recheck and their implied need for maker
directly reflects individual personal stake.

1
N.R. Dongre and Others v. Whirlpool Corporation and Another (1996) 5 SCC 714

4
IN THE MEDIEVAL TIMES TWO ESSENTIAL SORTS OF IMPRINTS COULD BE
FOUND:-

1. Merchants Mark
2. Production Mark

Using these process for Mark demonstration of these production needs and their origin are made
as per specifications. It is more of additionally etched process in boats and other given
specifically for their technique for trademarks for their occurrence for ship destruction for a
proof ad there conceivable. Other individuals working together or in societies began declaring it
as a blemish on their merchandise. This made the producer in charge of the nature of the
merchandise that was being created and helped them to hold their clients.

5
CHAPTER: 2 THE TRADEMARKS ACT 1999

2.1 WHAT IS TRADEMARK AUTHORIZING?

Trademark permitting is the point at which you as a trademark proprietor approve an outsider to
utilize your check in course of exchange thought of sovereignty over the offers of items or
administrations authorized under the trademark2.

By and large, there is “established trademark permitting” done under which the licensee can
make items utilizing the trademark authorized. Different types of permitting incorporate
marketing, diversifying and so forth. So trademark 3 permitting is the point at which a trademark
proprietor permits others to utilize the check without exchanging of possession.

2.2 WHY WOULD IT BE A GOOD IDEA FOR ONE TO PERMIT A TRADEMARK?

It’s the most ideal path in which you can extend your business in locales you haven’t, as of now.
All the more imperatively, it is monetarily truly gainful for both the licensor and the licensee. To
be more particular, from the licensor’s perspective, it is that compelling business methodology
that will just outcome in your officially all around perceived trademark to end up distinctly much
more rumored. Like specified before, it is likewise a decent approach to extend your trademark’s
topographical reach, enhance mark deceivability and other like things.

From the licensee’s perspective, it allows you to partner yourself with a very much perceived
trademark; in this manner giving you a high ground on your rivals. Similarly as on account of
physical property, for example, arrive, each proprietor of a Brand or Trademark has the privilege
to offer, permit, exchange, and so forth its particular image or trademark as per legitimate
strategies. Taking a view on varied factors of branding and trademark will make an impact with
that of rights and its methods and task. As per Indian process, the trademarks Act,1999 would
have authorization based on it. Simply put, if there should be an occurrence of a task of a
trademark, there is an adjustment in the responsibility for enlisted mark and in the event of

2
Anon, 2010. REGULATION OF INTELLECTUAL PROPERTY IN THE LEGISLATIVE CONTEXT WITH
SPECIAL REFERENCE TO. Journal of Management
3
Anupam Goyal, 2003. “Recognizing the property rights regime for indigenous knowledge of biodiversity in face of
TRIPS Agreement”. National Capital Law Journal, 6(9), pp. 129-153.

6
permitting; the privilege in the exchange stamp keeps on resting with the first proprietor yet just
far few confined rights to utilize the brand/check are given to the outsider.

2. 3 BUSINESS OBJECTIVES

Entities can negotiate lump sum prices for the transferring of assignment of their respective trade
mark for which is ethically a new arena of business in the current society. The business
objectives further extends to allowing entities from other part of the world to render service or
manufacture goods under the owner’s trademark by duly establishing a relationship through a
trademark licence agreement.

Having a trade mark also benefits by teaming up with respective partners, increasing the capacity
of producing, services and marketing without the requirement to expanding one’s own company.
This opens up new route for delivery or partitioning in the market. By getting the Trade mark
licensed, the Company enters into a new area of business which is not used by any entities in the
market of the specific geographical area.

Every entity can have their selections based on what appears to be challenging and more
appealing for them in terms of the concerned business the party intends to participate. In case if
there disputes, insurgency, acquisition or insolvency of the Company, the owners can take
decision to converge a few or can be abandoned by the owners of the Company.

The Owner can also retain such ownership of the trade mark or can lease it to somebody else so
that the owner could continue in doing the business under the said trade mark without
abandoning its business in the Public Domain. The owner can still acquire revenues having the
same trademark license. In the current world, Partnership licensing is beyond the horizon of
merely lending a logo into establishing a true partnering of business relationship which gives a
lot of drive and success to the key business of the Company. For example when Paper pulp
manufacturer and a Temporary ceasing Contractor teamed up to develop false ceiling tiles which
was not a simple Licensing but was an established business tie up of developing a product which
was truly a great success for both the parties.

7
Sometimes the mark is fringed by another entity with an object to tampering the brand name,
quality and compromising the reputation of the Company. In several instances, many local
vendors use others brand to promote their sale of goods. The infringers can basically convince
the owners of potential business in a tie up and get into business. For most of the Companies,
registering a trademark is mere a recognition than a source of revenue. Company shows keen
interest in increasing the Customer recognition of the product that the revenue or sales as a part
of promotion or advertisement. While another Entity partners the brand, the promotional or the
advertisement costs are shared.

2. 4 FINANCIAL AND COMMERCIAL CONSIDERATIONS OF A TRADEMARK

The Royalties or the payments can be paid or received in a form of a lump amount wherein at the
time when the right of the license is granted upon another entity. This can either be a fully paid
agreement or can be periodically paid until the period over the term of the License. Under the
royalties, the most common kind of consideration provided by the Entities by some kind of
upfront fee or based on the success in sales.

ROYALTY HAS TO BE DEALT WITH IN THE FOLLOWING WAYS,

 We need to ascertain when the Royalties are required to be paid,

 What kind of penalties are to be imposed for failing to pay on time,
 Any issues of holding international taxes where there were a requirement to pay out the
monies in the Country of established business,
 Any accrued interest on the outstanding payments or due to kind of payment.

Typically if we look into various Trade Mark Licensing agreements, the Royalty calculation
would depend on a number of other factor which would include a relative bargaining skill of the
Licensor and licensee, Its potential to acquire profit and how well the TM could be known in the
marketplace that deals with that particular kind of product or service. The Competitive situation
of the market is quite challenging and the Royalties would surely depend on the extent of its
success through the market. The base calculation of Royalties whether it is from the gross sale or
the net sale, all other associated costs of the overheads, profit margins, the calculation depends

8
The base calculation of Royalties whether it is from the gross sale or the net sale, all other
associated costs of the overheads, profit margins, the calculation depends on a pre-determined
rate at which the owner feels would be appropriate within a range of his profit margins. In short,
Royalties is a rewarding gesture from the Owner in connection with his performance and
appreciation of the parties involved in the business mutually supporting to enhance business.

2.5 ASSIGNMENT OF TRADEMARKS IN INDIA

The assignment of a trademark takes place when the ownership of such trademark is transferred
from one entity to another, which may either be along with or without the goodwill of the
trademarked business and which has to be recorded in the register of trademarks.

Complete Assignment of trademark from one entity to another: The owner transfers all his rights
held in the trademark to the other entity.

Assignment of trademark with respect to only certain goods and services: Here, the ownership of
trademark is limited to only certain products or services. For example, “A” is the owner of a
brand and uses his trademark for selling computers, television sets, and air-conditioners. “A”
assigns “B” the rights in the brand with respect to only the Air-conditioners, and whereby “A”
retains the rights in the brand with respect to computers and television sets.

Assignment with the goodwill: Here, the absolute ownership over the rights and value of a
trademark associated with the product is transferred from one entity to another. For example,
“A” is the owner of a brand and uses his trademark for selling computers. “A” sells his brand to
“B” whereby “B” retains all such rights vested in the brand and can use the brand trademarks for
selling computers as well as other electronic products of his choice.

Assignment without the goodwill: The assignment without goodwill is also known as “gross
assignment”. Here, the assignment refers to restrictions of rights of the buyer whereby it limits
the new owner of using the brand on products that the original owner is already For example,
“A” is the owner of a brand and uses his trademark for selling computers. “A” sells his brand to
“B” such that “B” will have no rights to use the brand trademark for selling his computer

9
products. However, “B” can use the brand trademark in the chain of businesses other than a
computer.

Using the case process of Trademarks Act 1999, there is a restriction of these process as per the
registered process and their confusion amid various other clear public users and other clear
deliverables. Such restrictions are

 Giving an account of these assignments and their results would have rights in a more
desperate work have effective goods and services. It further has a clear need for
association as per deeds.
 Taking the approach of these Assignments and their results would have different effective
process in a larger Spectrum.

2.6 LICENSING OF A TRADEMARKS IN INDIA

The licensing of a trademark allows the licensee to use the trademark, albeit the trademark itself
is not assigned to the other entity, that is to say, the ownership has not been transferred but the
mere use of the trademark is permitted to be used by the licensee.

Licensing of trademark has a plethora of benefits for both entities. Here, the licensor may enjoy
his rights to the trademark by generating royalties for its use, whereby the licensee is able to
broaden his market chain operations by using the said trademark for building reputation and
brand value.

In layman words, a licensor has the right to license his rights over the trademark as he may be
pleased with, such as by restricting the rights of the licensee in the trademark with respect to
products or services. The licensor may restrict the time and area within which said trademark can
be used by the licensee with respect to the product and services.

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2.7 AGREEMENTS FOR TRANSMISSION

Trademark assignments are generally executed by way of trademark assignment agreements

under which the transmission of transfer takes place from one entity to another4.

The following points are to be ensured while drafting such agreements for the assignment and
licensing of trademarks in India,

 That the rights of the trademark brand do not tend to cause harm due to obligations
prescribed in such agreement.
 The provision with regard to the assignment is with or without the goodwill of the
business should be properly negotiated and explicitly mentioned in the agreement.
 The agreement must be drafted in accordance with the purpose of the transaction in
question.
 The rights and duties of the licensee must be distinctively pre-determined and defined.
 The license agreement should be registered with the trademark Registrar, although it is
not compulsory but in a legal perspective, it is most advisable.
 It is more of the licensed for their agreement for Trademark Act 1999, relieved which do
provide registration for the license agreement. Using the process of the Trademark
Assignment will do make an impact in rights and duties for their distinctively determined
and further relieved.

CHAPTER: 3 THE COPYRIGHT ACT 1957

4
Supra note2.

11
Copyright, a unique intellectual property meant for the creative brothers and sisters around the
world is res incorporalis. In that sense, it has no tangible existence but is a proprietary right and
can be disposed of.

In modern life, every individual is aware of the concept of Copyright because of the expansion of
media and communication throughout the world. Today’s world has no shortage of ideas,
thoughts, modes of expression, and its distribution, which the world media has upheld through
the gift of technology coupled with a wider scope of communication and share. This very thing
has directed out attention towards the creative world, their rights and obligations, along with
their grievances in the form of disputes faced by the creators.

The Copyright Act, 1957 as amended in 2012 is the current vehicle to settle and guide the
creators towards betterment and give them some pecuniary opportunities so that they are further
encouraged to bless the world with their creativity.

3.1 ASSIGNMENT OF COPYRIGHT 

Nobody is entitled to copy, reproduce, publish or sell an original writing, painting, dramatic
production, sculpture, etc. without the permission of the creator. Thus, law provides a right to the
owner of the copyright (i.e. the creator) to transfer the ownership of the copyright to a third
party. For instance, in the case of making a complete movie – all the creative persons with their
idea turned into relevant works come to a producer, assign their rights that subsist in their work
in return for a royalty. These works are then summed up to form a complete movie. Yes, the
process isn’t that easy and involves many questions that arise both at the time of assignment and
especially after it.

3.1.1  FACETS OF COPYRIGHT ASSIGNMENT

1. It is a pecuniary opportunity for the first owner of copyright. The assignment must
specify the amount of copyright [vide Section 19(3) of the Copyright Act]. The creator
shall not assign or waive the right to receive royalties to be shared on an equal basis with

12
 the assignee of copyright, subject to certain conditions. [vide Section 18(1) proviso of
The Copyright Act, 19575]
2. In the case of an assignment of copyright in any future work, it shall take effect only
when the work comes into existence. In this regard, “assignee” includes the legal
representatives of the assignee, if he dies before the work comes into existence. [vide
Section 18(1) proviso of the Copyright Act]
3. The ownership may be assigned either wholly or only for a part of the work in question.
[vide Section 18(1) of the Act]
4. The Copyright Assignment must be in writing and signed by the assignor or by his duly
authorized agent. [vide Section 19(1) of the Act]
5. The duration of assignment must also be specified. The Delhi High Court recognized
Section 19(5) and stated that if the assignment deed is silent about the duration, it shall be
deemed to be 5 years from the date of assignment6.
6. The agreement deed may specify the territorial extent of such assignment. If silent, it
shall be presumed to extend within India. [vide Section 19(6) of the Act]
7. The assignment shall be subject to revision, extension, or termination on terms mutually
agreed upon by the parties. [vide Section 19(3) of the Act]
8. Where the assignee fails to exercise his rights within one year from the date of
assignment, the assignment in respect of such right shall be deemed to have lapsed,
unless otherwise specified in the assignment deed. [vide Section 19(4) of the Act]
9. If the assignment is in contrary to the terms and conditions of the rights already assigned
to a copyright society to which the creator is a member, it shall be deemed void. [vide
Section 19(8) of the Copyright Act7]
10. The creator is entitled to subsequent royalties in the course of future exploitation of a
cinematographic film, which includes his work, other than by way of exhibitions in a
cinema hall. For example, the creator will be entitled to subsequent royalties for satellite
right, home video, internet rights, the etc. Similar clause has been added for the case of
sound recording. [vide Section 19(9) and 19(10) of the Copyright Act8]
5
Inserted by Copyright (Amendment) Act, 2012
6
Pine Labs Private Limited vs. Gemalto Terminals India Private Limited and others (FAO 635 of 2009 and FAO
636 of 2009)
7
Inserted by Copyright (Amendment) Act, 2012.
8
Id.

13
11. In the case of a manuscript, the copyright being a personal property of the owner can be
transmitted by testamentary disposition. [vide Section 20 of the Act]
12. The equitable assignment is just the agreement to assign.
13. The assignee has the rights of- translation, abridgment, adaptation, dramatic and
filmmaking in the work.
14. For relinquishment of work, the author has to give notice in prescribed form to the
Registrar of Copyrights or by way of public notice. On its receipt, Registrar shall publish
it in the Official Gazette. With 14 days of the publication, the Registrar shall post the
notice on the official website of Copyright Office, so that such notice remains in the
public domain for not less than three years. Such right shall cease to exist from the date
of the notice. [vide section 21 of the Copyright Act]

It may be noted in this context, that the author has an alternative for the shortcomings or
confusions of assignment of copyright. They can register their work with a copyright society and
thereafter license it to whomsoever they desire.

3.1.2 MORAL RIGHTS INVOLVED IN COPYRIGHT ASSIGNMENT

Moral rights are independent of the author’s copyright and shall remain with the author even if
he has assigned his copyright.

1. The creator of work has the right to claim ownership thereof;

2. In case of any distortion, modification or mutilation of the original work, he shall have
the right to claim damages;
3. If harm is being caused to the goodwill of the creator by commission or omission of
any act by the assignee, he shall have the right to damages provided such an act is
done before the expiration of the term of assignment.

3.1.3 FORESEEABLE DISPUTES

14
 1. The first dispute which may arise is that as regards the period of copyright
assignment. The statute is very particular that an assignment has to be for a specified
period even if there is an agreement in contrary 9. [vide Section 19(2) of the Copyright
Act]
2. Again, in a situation where assignee fails to exercise his rights assigned to him, and
the assignor’s actions do not influence such failure, then, the statute empowers the
Copyright Board, on receipt of a complaint from the assignor, to take cognizance of
the case and make necessary inquiries as it may deem fit. It further gives a
discretionary power to the Board where it can revoke such assignment. [vide Section
19A(1) of the Copyright Act]
3. In the case of a monetary dispute over a copyright assignment, the Copyright Board
has the power on of a complaint from the aggrieved party, to hold an inquiry and pass
necessary order including an order for the recovery of any royalty payable [vide
Section 19A(2) of the Copyright Act]. Any such final order must be passed within a
period of six months from the date of receipt of the complaint. Delay in compliance
shall oblige the Board to record the reasons thereof. [vide Section 19A(3) of the
Copyright Act

3.2 LICENSE OF COPYRIGHTS

The owner of the copyrights of any work may grant a license under the Copyright law to
authorize a third party to use and distribute the copyrighted work. A copyright license may be
exclusive or nonexclusive.

The term Exclusive License is defined in section 2(j) of the Copyright Act to mean and include a
license which confers on the licensee and the persons authorized by him, to the exclusion of all
other persons, any right comprised in the copyright of a work.

Although assignments and licenses are both contracts involved with the transfer of rights for
exploitation of a copyrighted work, both have their own distinct features. A license is nothing but

9
Saregama India Ltd. V. Suresh Jindal AIR 2006 Cal. 340.

15
an authorization from the copyright owner to exercise certain acts, without which the acts are
considered as infringement. Therefore, no transfer of ownership happens in cases of licenses.

On the contrary, an assignment involves the transfer of ownership of the copyright. In addition to
this, the assignee being the owner of the copyright, is entitled to sue third parties against
infringement of copyrights. The licensee, including the exclusive licensee, can exercise this right
only if the same is specifically included in the terms of the agreement.

The owner of a copyright in any existing work or the prospective owner of the copyright in any
future work, may grant any interest in the right, by License in writing, signed by him or by his
duly authorized agent. The requirements specified above for an assignment will apply for a
License. The Copyright Board is empowered to grant compulsory licenses under certain
circumstances on suitable terms and conditions in respect of 'Indian work'. The circumstances
necessary for grant of such a License are as follows:

(a) the work must have been published or performed in public.

(b) the author must have refused to republish or allow the republication of the work or must
have refused to allow the performance in public, that by reason of such refusal the work
is withheld from the public;
(c) the author must have refused to allow communication to the public by broadcast, of such
work or in the case of a sound recording the work recorded in such sound recording, on
terms which the complainant considers reasonable.

The Copyright Act states that in the case of unpublished Indian work, where the author was a
citizen of India or is dead, unknown or cannot be traced, under such circumstances, any person
may apply to the Copyright Board for a License to publish the work or translation thereof in any
language according to the procedure laid down in the Act.

3.2.1 TYPES OF LICENSES UNDER THE COPYRIGHT ACT, 1957 AS AMENDED IN

2012

16
Chapter IV of the Copyright Act discusses licensing of copyrighted works. This chapter
discusses seven different types of licenses issued by the Copyright Board:

a) Compulsory licenses for works withheld from the public: According to this
provision, any person may approach the copyright board, for issuance of a
compulsory license to publish a work that is withheld from the public by the
copyright owner. However, before approaching the Copyright Board, the
complainant should have approached the copyright owner first for a license to
republish or perform the work and the copyright owner should have unreasonably
rejected the request of the complainant.
b) Compulsory licenses for unpublished works of unknown authors: In case of
unpublished works of unknown or dead authors, any person may apply to the
Copyright Board for a license to publish or communicate to the public such works
or translations thereof. However, before making such an application, the applicant
is required by law, to publish his proposal to do so in a national newspaper.
c) Compulsory licenses for the benefit of the disabled: Any person or non-profit
organization working for the benefit of the disabled may apply to the Copyright
Board for a compulsory license to publish any work in a format suitable for their
accessibility.
d) Statutory licenses for Cover Version: Section 31C of the Copyright Act provides
for the grant of statutory licenses for making cover versions of any sound
recordings. This section specifically requires the Copyright Board to fix the
minimum amount of royalty to be paid for the creation of such a version.
e) Statutory licenses for Broadcasting literary, musical works and sound recordings:
This license is issued by the Copyright Board in favour of any broadcasting
organization desirous of broadcasting to the public any literary, musical work or
sound recording which is already published by the copyright holder. Although the
Copyright Board is authorized to determine the royalties payable under this
license, the Board is yet to convene and determine these royalties.
f) License to produce and publish translations: This license issued by the Copyright
Board permits the applicant, after the applicant pays a determined royalty to

17
 produce and publish a translation of literary or dramatic work, after seven years of
publication of said work. It is pertinent to note here, that this licensing is not
applicable to cinematographic films and sound recordings.
g) License to reproduce and publish works for limited purposes: The Copyright
Board may issue licenses to publish a work in India if the editions of such literary,
scientific or artistic works are not made available in India. The Copyright Board,
in case of such applications, may issue the license after determining the royalty to
be paid to the copyright holder.

3.3 THE DIFFERENCE BETWEEN COPYRIGHT ASSIGNMENTS AND LICENSES

There are two ways that a copyright owner can transfer some or all of his or her copyright rights:
through a license or an assignment.

In an assignment of copyright rights, the owner sells his or her ownership rights to another party
and has no control over how the third party uses those rights. A copyright assignment is
sometimes referred to as a sales agreement for copyright.

The buyer (assignee) can then use the copyrighted work or do whatever he or she wants with it.
He or she all of the assigned rights that the original owner had.

A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright
owner/assignor. The subject of the assignment must be clear as to what copyright is being
assigned in which work(s).

In a license of copyright rights, the owner maintains his or her copyright ownership rights, but
allows another party (the licensee) to exercise some of those rights without the licensee’s actions
being considered copyright infringement. A license is often preferred over an assignment when
the copyright holder wishes to maintain and exercise some ownership control over the rights and
how the licensee uses the copyright holder’s rights.

For example, a typical software license agreement is a copyright license agreement. The software
copyright owner grants the user/licensee the right to use the software in a specified, restricted

18
manner. In return, the user/licensee may agree to limit his or her use of the software in various
ways and to pay the copyright owner a license fee.

Unlike a copyright assignment, a copyright license does not have to be in a signed writing. A
license can be oral or arise by implication when considering all of the facts and circumstances
surrounding the transaction between the copyright owner and the purported licensee.

If you own a copyright in a work that you are thinking about assigning, you should consider
whether to license your copyright instead, thus allowing you to retain ownership, and license
only certain rights to the other party.

CHAPTER: 4 CONCLUSION

19
Just as in the case of physical property such as land, every owner of a Brand or Trademark has
the right to sell, license, transfer, etc. its respective brand or trademark in accordance with legal
procedures. A brand or Trademark owner can transfer his rights with respect to his trademark
either by way of assignment or by licensing. In India, The Trade Marks Act, 1999 deals with
assignment as well licensing of trademarks.

To put it summarily, in case of an assignment of a trademark, there is a change in the ownership

of the registered brand and in case of licensing, the right in the trade mark continues to vest with
the original owner but only few restricted rights to use the brand/mark are given to the third
party.

Assignment of a trademark occurs when the ownership of such mark as such, is transferred from
one party to another whether along with or without the goodwill of the business. In case of a
registered Trademark, such assignment is required to be recorded in the Register of trade marks.

A mark may be assigned or transferred to another entity in any of the following manners:

Complete Assignment to another entity- The owner transfers all its rights with respect to a mark
to another entity, including the transfer of the rights such as right to further transfer, to earn
royalties, etc. (E.g. X, the proprietor of a brand, sells his mark completely through an agreement
to Y. After this X does not retain any rights with respect to the brand)

Assignment to another entity but with respect to only some of the goods/ services- The transfer
of ownership is restricted to specific products or services only. (E.g. P, the proprietor of a brand
used for jams and jellies and dairy products. P assigns the rights in the brand with respect to only
dairy products to Q and retains the rights in the brand with respect to jams and jellies.) This is
called partial assignment.

Assignment with goodwill- Such assignment is where the rights and value of a trademark as
associated with the product is also transferred to another entity.(E.g. P, the proprietor of a brand
"Shudh" relating to dairy products, sells his brand to Q such that Q will be able to use the brand
"Shudh" with respect to dairy products as well as any other products it manufactures.)

20
Assignment without goodwill- Such assignment also referred to as gross assignment, is where
the owner of the brand restricts the right of the buyer and does not allow him to use such brand
for the products being used by the original owner. Thus, the goodwill attached to such brand with
respect to the product already being sold under such brand, is not transferred to the buyer. (E.g.
P, the proprietor of a brand "Shudh" relating to dairy products, sells his brand to Q such that Q
will not be able to use the mark "Shudh" with respect to dairy products but can use this brand for
any other products being manufactured by it. In such case the goodwill which is associated with
brand "Shudh" for dairy products is not transferred to Q and Q will be required to create distinct
goodwill of brand "Shudh" for any other product or service like Restaurant wherein Q proposes
to use this brand.). In many jurisdictions like United States, assignment of mark without
goodwill is not allowed at all. India on the other hand allows assignment without goodwill.

Further, in case of registered Trademarks, the Trade Mark Act 1999 also puts certain restrictions
on the assignment of a registered trade mark wherein there exist possibilities of creating
confusion in the mind of public/users. Such restrictions are:

Restriction on assignment that results in the creation of exclusive rights in more than one persons
with respect to the same goods or services, or for same description of goods or services or such
goods or services as associated with each other.

Restriction on assignment that results in different people using the trademark in different parts of
the country simultaneously.

The licensing of a mark is to allow others to use the mark without assigning the ownership and
the same may be done for all or some of the goods and services covered. The Trademarks Act
does not mention the term 'License', the concept under the Act is mentioned as that of a
'Registered User'.

Trademark licensing is advantageous to both the parties. While the licensor enjoys its rights to
the mark by getting the royalties for its use, the licensee is able to expand its market operations
by using the brand and developing its reputation.

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In case of Licensing, the licensor is open to license the rights over the trademark in manner it
may like. The Licensor can restrict the rights of the licensee in a trademark or brand with respect
to the products or services wherein the licensee can use such brand, with respect to time for
which it can use such mark, with respect to area within which it can use such mark etc.

Copyright owners have a bundle of exclusive rights that include the right to publish, copy,
distribute, display, perform, and the create derivative works based on the original work. When
giving another person permission to do any of those things with your work, you need a license or
assignment agreement.

Having the proper type of agreement in place will ensure that your intentions are met in terms of
who will maintain ownership over your copyright and what exact rights in your bundle of rights
you’ll be permitting the other party to have.

With a copyright assignment, you are contracting to give someone else your entire copyright.
Upon execution of the agreement, the ownership of the copyright will transfer from one party to
another.

Once you assign your copyright, you may not publish your work even if you were the original
author.

A newer type of assignment is an assignment with reversion. A reversion is a future right to own
the copyright. Thus, the copyright will be granted to another person, who owns the copyright for
a period of time or until a condition is met, and then the copyright reverts back to the original
owner. In some cases, the original owner will have to pay for the reassigning of the copyright.

If you want to maintain ownership of the copyright, a license is a better option. With a license,
you’ll be maintaining ownership, while granting permission for another party to use your work in
a particular way.

It’s very important to carve out the scope of the permitted use carefully to ensure that you’re not
granting an over-inclusive set of rights.

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Other important considerations are the license’s exclusivity, duration and payment terms. Parties
may negotiate for whether the license is exclusive, meaning that the licensee will be the only
person afforded those rights and the licensor will not grant these rights to anyone else, or
whether the license is non-exclusive, meaning that the licensee is not the only person or entity
being granted the particular rights. The license agreement’s duration shall be clearly provided,
including both parties’ rights to terminate. Finally, how the licensor will be paid for the granting
of the license shall be laid out.

Assignments and Licensing Agreements should be drafted by an attorney to ensure that existing
and future rights are protected, while keeping in mind the overall business objectives and
creative pursuits. If you are thinking about signing a license or assignment, please consult with
an attorney to make sure you understand every provision and the agreement as a whole

It is imperative that when considering assignment or license arrangements, companies ensure

that their arrangements do not infringe Indian exchange control regulations. Often companies
engaging in an assignment arrangement overlook the fact that Indian Reserve Bank rules must be
followed when issuing shares as consideration to an Assignor who is a non-resident. Issues
relating to ownership of IPR must also be carefully considered especially where employees may
be creating IPR outside the scope, time and available resources of the company that they work
for. Employment agreements need to be clear as to the scope of the engagement.

Assignment and Licensing of brands are considerable issues and proper strategizing may open
vistas of opportunities for all, a licensor, a licensee, an assignor and an assignee. Both concepts
involve a degree of planning for the future of the parties involved and the brand in question. The
development of a brand, its propagation and its use, all lie in the hands of the proprietor of the
brand and trademark and assignment and licensing are effective methods to manage the same.

CHAPTER: 5 BIBLIOGRAPHY

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1. Ng, D. L. a. P. W., 2010. Intersect between Intellectual Property Law and Competition
Law. Journal of Management.
2. Anon, 2010. REGULATION OF INTELLECTUAL PROPERTY IN THE
LEGISLATIVE CONTEXT WITH SPECIAL REFERENCE TO. Journal of
Management.
3. Anupam Goyal, 2003. “Recognizing the property rights regime for indigenous knowledge
of biodiversity in face of TRIPS Agreement”. National Capital Law Journal, 6(9), pp.
129-153.
4. Dutta, R., 2008. Critical Analysis: Reflection of IP in Competition Law of India.
5. Kumar, B. a., 2006. Law of trademarks in India. 2nd ed. Delhi: center for law.
6. L, W. B., 2000. Law relating to patents, trademarks, copyright, designs and
geographical indications. 2nd ed. Delhi: universal law publishing Co. Pvt.
7. S. Chakravarthy, 2005. Evolution of Competition Policy and Law in India. New Delhi:
Academic Foundation.
8. https://gradestack.com/Intellectual-Property-Law/Copyright-Licensing-and/Licensing-
and-Assignment/15951-3230-8485-study-wtw.
9. Rakesh Prabhu and Ramya Kumar India: Assigning & Licensing IPR In India
10. Last Updated: 14October2009
http://www.mondaq.com/india/x/87398/Trademark/Assigning+Licensing+IPR+In+India.
Retrieved on 15.10.2018.
11. David Szostek The Difference Between Copyright Assignments and Licenses,
08.04.2015 https://www.edwardallenlaw.com/difference-between-copyright-assignments-
and-licenses/ Retrived on 15.05.2018.

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