module_7_27_

INTELLECTUAL
PROPERTY CONTRACTS

CERTIFICATE COURSE

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DEVELOPED BY

MODULE - 7

ASSIGNMENT AND LICENSING OF
TRADEMARKS

7.1 INTRODUCTION continues to vest with the original owner but only few
restricted rights to use the brand/mark are given to
A trade mark includes any device, brand, heading, the third party.
label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours Transfer Assignme
or any combination thereof capable of distinguishing of nt
goods and services available from one another. A
trade mark should be capable of being represented Trademar (Change
graphically and should also be capable of
distinguishing the goods or services of one person Licensing
from those of others.i (No

Similar to physical property such as land, every owner Change
of a Brand or Trademark has the right to sell, license,
transfer, etc. its respective brand or trademark in 7.2 TRADEMARK ASSIGNMENT
accordance with legal procedures. A Brand or
Trademark owner can transfer his rights with respect “Assignment” means assignment in writing by act of
to his trademark either by way of assignment or by parties concernedii. The assignment of a trademark
licensing. In India, The Trade Marks Act, 1999 deals occurs when the ownership of such mark as such, is
with assignment as well licensing of trademarks. transferred from one party to another whether along
In case of an assignment of a trademark, there is a with or without the goodwill of the business. The
change in the ownership of the registered brand and assignment can be for all the goods or services
in case of licensing, the right in the trade mark covered by such trade mark or only some of such
goods or services. In case of a registered Trademark,
such assignment is required to be recorded in the
Register of trade marks.

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7.2.1 ESSENTIALS OF A VALID ASSIGNMENT 7.2.2 MANNER OF ASSIGNMENT OF TRADEMARK
IN INDIA:
1. The assignment should be in writing;
2. The assignment should identify the parties to 1. Complete Assignment of trademark from
one entity to another: The owner transfers all
the assignment, that is, the assignor and the his rights held in the trademark to the other
assignee; entity including the transfer of the rights such
3. The assignment should identify the mark(s) to as right to further transfer, to earn royalties,
be assigned and any relevant applications or etc. (E.g. X, the proprietor of a brand, sells his
registrations for the mark(s); mark completely through an agreement to Y.
4. The assignment should identify the goods After this X does not retain any rights with
and/or services to be assigned (in some respect to the brand.)
jurisdictions, all the goods and/or services in
an application or registration must be 2. Assignment of trademark with respect to
assigned); only certain goods and services: Here, the
5. The assignment should be given for ownership of trademark is limited to only
consideration; certain products or services. For example, “A”
6. The assignment should identify the effective is the owner of a brand and uses his
date of the assignment; trademark for selling computers, television
7. The assignment should be duly executed sets, and air-conditioners. “A” assigns “B” the
(some jurisdictions require that it be signed rights in the brand with respect to only the
by all the parties to the assignment, while in Air-conditioners, and whereby “A” retains the
others, execution by the assignor alone is rights in the brand with respect to computers
sufficient); and and television sets.
8. The assignment should include the transfer of
goodwill (required in certain jurisdictions). (In 3. Assignment with the goodwill: Here, the
India, for example, a trademark can be absolute ownership over the rights and value
assigned with or without goodwill, whereas in of a trademark associated with the product is
the United States an assignment without transferred from one entity to another. For
goodwill is considered an assignment “in example, “A” is the owner of a brand and uses
gross” and considered invalid under U.S. law.) his trademark for selling computers. “A” sells

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his brand to “B” whereby “B” retains all such the right of the registered proprietor to assign the
rights vested in the brand and can use the trade mark for any consideration and to give receipt.iii
brand trademarks for selling computers as Section 37 empowers the registered proprietor to
well as other electronic products of his choice. assign the trademark and to give effectual receipts
for any consideration for such assignment.
4. Assignment without the goodwill: The
assignment without goodwill is also known as ● Assignment of an unregistered mark:
“gross assignment”. The owner of the brand Section 39 stipulates that an unregistered trademark
restricts the right of the buyer and does not may be assigned or transmitted with or without the
allow him to use such brand for the products goodwill of the business concerned. A request has to
being used by the original owner. Thus, the be made on Form TM-16 for an unregistered
goodwill attached to such brand with respect trademark to be assigned or transferred.
to the product already being sold under such
brand, is not transferred to the buyer. For ● Assignment of a registered trademark:
example, “A” is the owner of a brand and uses Section 38 stipulates that trademarks can be either
his trademark for selling computers. “A” sells assigned in full or transmitted in part, with or without
his brand to “B” such that “B” will have no the goodwill of the business. All transmissions or
rights to use the brand trademark for selling assignments must be registered with the Registrar of
his computer products. However, “B” can use Trade Marks on Form 23 or 24 of the Trade Marks.
the brand trademark in the chain of
businesses other than a computer. In many However, in case of registered Trademarks, the
jurisdictions like United States, assignment of Trade Mark Act 1999 also puts certain restrictions on
mark without goodwill is not allowed at all. the assignment of a registered trade mark wherein
India on the other hand allows assignment there exist possibilities of creating confusion in the
without goodwill. mind of public/users. Such restrictions are:

7.2.3 PROCEDURE TO RECORD THE i) Restriction on assignment that results in the
ASSIGNMENT OF TRADEMARK WITH THE creation of exclusive rights in more than one
REGISTRAR: person with respect to the same goods or
services, or for same description of goods or
Section 37 of the Trademark Act, 1999 recognizes

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services or such goods or services as 7.4 TRADEMARK ASSIGNMENT IN INDIA
associated with each other.iv
ii) Restriction on assignment that results in Whether the trademark is a registered trademark or
different people using the trademark in an un-registered trademark, the assignee should file
different parts of the country a form to change the ownership details with the
simultaneously.v Trademark registry within 6 months. To record this
change, an application is to be made in Form TM-M
7.3 TRANSMISSION AGREEMENTS with the registrar of Trademarks as per the new
Trademark Rules. The application should clearly state
Trademark assignments are generally executed by that the assignment is complete or partial, with or
way of trademark assignment agreements under without goodwill after examination, such change will
which the transmission of transfer takes place from be recorded with the Trademark registry.
one entity to another.vi It is to be ensured when
drafting such agreement that: 7.5 CLAUSES REQUIRED IN ASSIGNMENT
AGREEMENT OF TRADEMARK
1. That the rights of the trademark brand do not
tend to cause harm due to obligations 1. Trademark to be assigned: The agreement
prescribed in such agreement. must clearly mention the description of the
trademark that is being assigned.
2. The provision with regard to the assignment
is with or without the goodwill of the business 2. Territory: The agreement must also specify
should be properly negotiated and explicitly the territory in which the assignee has
mentioned in the agreement. authority to use the trademark and is not
allowed to go beyond the territory of usage.
3. The agreement must be drafted in accordance
with the purpose of the transaction in 3. Assignment fee and cost: The agreement
question. must also include fee and cost for assignment
which can be decided by taking many factors
4. The rights and duties of the licensee must be into consideration and varies accordingly for
distinctively pre-determined and defined. different agreements.

5. The license agreement should be registered 4. Effective Date: Effective date of assignment
with the trademark Registrar, although it is must be laid down clearly.
not compulsory but in a legal perspective, it is
most advisable.

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5. Assignment with goodwill or without: It is defrauded. It must be noted, however, that
the most important part of an assignment though the law does provide certain safeguards,
deed is to mention if he assignment is along the onus of creating a suitable assignment
with good will or not. agreement is upon the parties concerned.

6. Governing law and dispute resolution: The 7.6 TEMPLATE FOR TRADEMARK
law governing the trademark which is ASSIGNMENT AGREEMENT
assigned should be mentioned along with the
procedure to resolve a dispute between the TRADEMARK ASSIGNMENT AGREEMENT
parties. (TEMPLATE)

Assignment agreements are of considerable This Assignment Agreement is made and entered into the
importance in IPR since they allow the [●] day of [●]
intellectual property owners to transfer their
intellectual property for commercial returns, [Assignor’s name], a corporation organized and existing
ensuring that the intellectual property can be under the laws of [●], located at [●] (the "Assignor") of
used for monetary gains. Intellectual property the one part; AND
that is created is utilized and exploited by the
Assignment Agreement, where the purchaser or [Assignee’s name], a corporation organized and existing
assignee takes benefit of the assignment rights under the laws of [●], located at [●] (the "Assignee")
that are created. These assignment agreements of the other part.
give rise to legal and equitable rights in law and
purport many issues if they are not carefully The Assignor and the Assignee are hereinafter
constructed as required by law. The position of referred to, individually, as “Party” and collectively, as
an Assignment Agreement in the intellectual “Parties”.
property law of India is one of great consequence
despite being a private transaction between the WHEREAS, the Assignor is the proprietor and
assignor and the assignee. One of the reasons for beneficial owner of the trademark(s) of which the
this is that the law is required to protect the particulars are set forth as follows:
owner of the intellectual property from being
Trademark Class

WHEREAS, the Assignee desires to acquire from the

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Assignor the Trademark(s) Registration(s) in all rights, title and interests derived from and in
accordance with the terms and conditions of this connection with the Trademark(s).
Agreement.
3. Representations and Warranties: The Assignor
NOW THEREFORE, the Parties hereto agree as follows: represents and warrants that it is the sole
proprietor of all rights, title and interests derived
1. Assignment. Assignor hereby irrevocably, and from and in connection with the Trademark in
unconditionally assigns, transfers, and conveys to Territory, and that the assignment of the
Assignee and its successors and assigns, all of Trademark from the Assignor to the Assignee
Assignor’s right, title, and interest in and to the shall not cause any infringement of industrial
Assigned Property. Assignor further irrevocably, property rights of any third party in the Territory.
and unconditionally assigns, transfers, and
conveys to Assignee and its successors and 4. Confidentiality: Assignor must not use any
assigns all claims for past, present and future Confidential Information assigned as part of the
infringement or misappropriation of the Assigned Property except for the benefit of
Intellectual Property Rights included in the Assignee. Assignor must not disclose such
Assigned Property, including all rights to sue for Confidential Information to third parties.
and to receive and recover all profits and Assignor must take reasonable steps to maintain
damages accruing from an infringement the confidentiality and secrecy of such
misappropriation prior to the Effective Date as Confidential Information and to prevent the
well as the right to grant releases for past unauthorized use or disclosure of such
infringements. Assignor hereby also assigns Confidential Information. Any breach of these
goodwill associated with the trademark(s) to restrictions will cause irreparable harm to
assignee, and assignee hereby accepts all these Assignee and will entitle Assignee to injunctive
rights, titl and ownership of the trademark. relief in addition to all applicable legal remedies.

2. Consideration: For and in consideration of the 5. Indemnification. Assignor will defend, indemnify,
sum of [●] paid by the Assignee to the Assignor, and hold harmless Assignee, and Assignee’s
the Assignor does hereby assign to the Assignee officers, directors, shareholders, successors, and
assigns, from and against all losses, liabilities, and

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costs including, without limitation, reasonable (unless Assignee otherwise directs)
attorneys’ fees, expenses, penalties, judgments, Intellectual Property Rights
claims and demands of every kind and character protection relating to any or all of the
that Assignee, its officers, directors, Assigned Property in any country
shareholders, successors, and assigns may incur, throughout the world, and when so
suffer, or be required to pay arising out of, based obtained or vested, to renew and
upon, or by reason of: the breach by Assignor of restore the same.
any of the representations or warranties made by b. to defend any judicial, opposition, or
Assignor under this Agreement; Assignor’s use of other proceedings in respect of such
the Assigned Property prior to the date of this applications and any judicial,
Agreement; or Assignor’s failure to perform its opposition, or other proceedings or
obligations under this Agreement. petitions or applications for
revocation of such Intellectual
6. Further Assurances Property Rights; and
6.1. Assistance. Assignor will take all action c. to assist Assignee with the defense
and execute all documents as Assignee and enforcement of its rights in any
may reasonably request to effectuate the registrations issuing from such
transfer of the Assigned Property and the applications and in all Intellectual
vesting of complete and exclusive Property Rights protection in the
ownership of the Assigned Property in Intellectual Property.
Assignee. In addition, Assignor will, at the
request and sole cost and expense of 7. Governing Law and Jurisdiction: This Agreement
Assignee, but without additional will be governed by, and construed in accordance
compensation, promptly sign, execute, with, the laws of the India.
make, and do all such deeds, documents,
acts, and things as Assignee may 8. Amendment and Waiver: This Agreement may
reasonably require: not be amended or modified unless mutually
a. to apply for, obtain, register, maintain agreed upon in writing by the parties and no
and vest in the name of Assignee alone waiver will be effective unless signed by the party

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from whom such waiver is sought. The waiver by 7.7 LICENSING OF TRADEMARK
any party of a breach of any provision of this
Agreement will not operate or be construed as a Black’s law dictionary defines a license as a
waiver of any subsequent breach. “revocable permission to commit some act that would
be unlawful.”vii The licensing of a mark is to allow
9. Severability: If any provision of this Agreement is others to use the mark without assigning the
held invalid by any court of competent ownership and the same may be done for all or some
jurisdiction, such invalidity will not affect the of the goods and services covered. Trademark
validity or operation of any other provision, and licensing is advantageous to both the parties, while
the invalid provision will be deemed severed from the licensor enjoys its rights to the mark by getting
this Agreement. the royalties for its use; the licensee is able to expand
its market operations by using the brand and
10. Entire Agreement: This Agreement is the entire developing its reputation. In case of Licensing, the
licensor is open to license the rights over the
agreement concerning the subject matter hereof. trademark in manner it may like. The Licensor can
restrict the rights of the licensee in a trademark or
It supersedes all prior and contemporaneous brand with respect to the products or services
wherein the licensee can use such brand, with respect
agreements, assurances, representations, and to time for which it can use such mark, with respect to
area within which it can use such mark etc.
communications between the parties. In layman words, a licensor has the right to license his
rights over the trademark as he may be pleased with,
WITNESS 1 such as by restricting the rights of the licensee in the
trademark with respect to products or services. The
[ASSIGNOR] licensor may restrict the time and area within which
Name: said trademark can be used by the licensee with
Designation: respect to the product and services.

WITNESS 2

[ASSIGNEE]
Name:
Designation:

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7.7.1 TRADEMARK LICENSING IN INDIA It should also include the degree of control,
exercised by the proprietor over the
The Trademarks Act does not mention the term permitted use and whether the proposed
'License', the concept under the Act is mentioned as registered user would be the sole registered
that of a 'Registered User' and ‘Permitted User’. user.
Section 2 (1) (r) of the Act lays down the provision for 3. Information about the concerned goods or
two types of “permitted use”, one by the registered services.
user and the other by any person other than the 4. Conditions or restrictions, if any, regarding
registered user. the characteristics of the goods or services
The statutory provision under Section 48 of Act and the mode, place and period of permitted
stipulates that a person other than the registered use.
proprietor of trademark may be registered as a 5. Information about whether the permitted is
registered user. Thus, the use of a registered for a limited period or without any such limit
trademark can be permitted to a registered user in
accordance with the provisions of the Act and for that The application for registration should be made
purpose the registered proprietor has to enter into an within six months of the date of the agreement. The
agreement with the proposed registered user. Registrar is the final authority under the Act to grant
Section 49 of the Act regulates the registration as a the registration. The Registrar would register the
registered user. The registered proprietor and the proposed registered user after being satisfied of the
proposed registered user should jointly apply for compliance of the requirements of the registration. If
registration as registered user in a prescribed form. there are other registered users, he shall issue notice
The application should include in the prescribed manner about the proposed
registered user to them. The registration will be
1. The agreement between them, in writing or a published in Indian Trade Marks Journal within two
duly authenticated copy of the agreement. months of registration. The registered user has the
right to use the registered trade mark, subject to the
2. An affidavit, made by the registered conditions and restrictions of the agreement on
proprietor or a person authorized by him. The payment of certain royalty. He can institute
affidavit should include particulars of the infringement proceedings under certain
relationship between the registered
proprietor and the proposed registered user.

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circumstances. But he cannot transmit and assign enforced, or that the circumstances have changed
these rights. since the date of registration, etc. Under the said
Permitted use of a registered trade mark by a person provision notice and opportunity of hearing is
other than the registered user is allowed under provided before cancellation of registration.
certain conditions:
7.8 MODES OF TRADEMARK LICENSING
1. The trade mark must remain registered for
the time being 1. Franchising: Franchising is a specialized
license where a franchisee is allowed by the
2. The use should be with consent of the franchisor in return for a fee to use a
registered proprietor and the consent should particular business model and is licensed a
be given by a written agreement. bundle of IP rights, notably, trademarks and
supported by training, technical support and
3. The use must be complied with any conditions mentoring. When a business model is
or limitations to which it is subjected or the successful and replicable at other locations,
registration of the mark is subjected. permitting interested third parties to set up
independent businesses based on a proven
The main difference between the registered user and business model, along with its attendant
unregistered permitted user is that the registered trademarks, know-how and other intellectual
user can institute proceedings of infringement in property rights (such as designs, patents and
certain circumstances, whereas the unregistered copyright), has proven to be an enormously
permitted user does not have such a right successful and rapidly growing trend. The key
to franchising is the licensing of intellectual
7.7.2 VARIATION OR CANCELLATION property rights, particularly trademarks.

The Act under Section 50 provides for variation or 2. Merchandising: The licensing of trademarks,
cancellation of the registration of a registered user/ designs, artworks as well as fictional
licensee on the grounds, among others, that the characters (protected by these rights) and
registered user/licensee has used the trademark in a real personalities are broadly referred to as
manner not in accordance with the agreement, or the merchandising. Allowing manufacturers of
proprietor/ user has failed to disclose any material
fact for such registration, or that the stipulations in
the agreement regarding the quality of goods is not

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ordinary consumer goods such as plates, accessories joined together to produce Lexus
mugs, towels, caps, clothes, to name a few, to Coach Edition which is the luxury motor car
apply on their products the trademark of Lexus with the interior finishing in coach
another immediately adds appeal to an leather products.
otherwise commonplace object and a means 5. Component or ingredient branding: A
of distinguishing themselves in the market product may license the right to use the
place. Example: Trademarks of popular trademark of an ingredient. Using the
companies, sports teams, universities have trademark of that ingredient in the packaging,
huge consumer recognition and appeal, advertising or on the host product itself
allowing for brisk sales at a premium price. influences consumers towards that product.
3. Brand Extension: Through a trademark The reputation of the trademark of the
licensing agreement, a company may team up ingredient lends value and appeal to the host
with another who may be provided with the product.
right to apply the trademark on a new Example: PC computers with Intel Inside and Stereos
product. with Dolby noise reduction
Example: Monaco Coach, a manufacturer of luxury
recreational vehicles entered into a licensing 7.8.1 CLAUSES REQUIRED IN LICENSING
agreement with Dodge, a manufacturer of AGREEMENT OF TRADEMARK
trucks, to use the Dodge trademark and logo
on their trailers. By this agreement Dodge A licensing agreement is essential for laying down the
successfully extended their product (trucks) terms and conditions of the use of a trademark. Some
into (trailers). of the key elements that can be made a part of the
4. Co-branding: Two or more reputed agreement subject to special needs and
trademarks, not necessarily with the same circumstances of the parties include:
level of reputation may join together in one
product creating a new appeal to the same 1. Identification of Parties: The agreement
clientele or break into a new market. should be enacted between the party who has
Example: Lexus, the luxury motor car of Toyota and the title to grant the rights in the license and
Coach reputed for its high quality leather the party who will be exercising those rights

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along with their full legal names (for 6. Termination/Cancellation of Agreement:
identification purposes) and address. This part of the agreement should contain
2. Provision for quality control: The provision circumstances under which the license would
for quality control is essential for maintaining be cancelled and the consequences of the
the goodwill and reputation of the trademark. cancellation should also be dealt with well in
The agreement must provide for advance so that a party can exit the
consequences of infringement of quality agreement having full knowledge of the
measures so as to ensure that the quality of consequences of termination.
the product is maintained.
3. Duration of the license: Period for which the 7. Restrictions as to use License: The
license has been granted needs to be agreement should provide for specific
specified. restrictions or terms on the use of trademark.
4. Nature of License: The agreement should
provide for whether the license is Exclusive 8. Governing law and dispute resolution:
(licensee has the right to use the trademark to Intellectual property disputes can be
exclusion of all, including the licensor) or Non- economically taxing and time consuming even
exclusive (provides for right to use the when they arise in relation to licensing
trademark according to the grant, the licensor agreements. Therefore, dispute resolution
may continue to use the trademark himself as mechanism is necessary to be laid down in the
well as grant other the licenses). The agreement so that the dispute resolution is
agreement should also provide for whether cost-effective and quick.
sub-licensing is permitted and the extent and
the terms on which it is permitted and the 7.9 TEMPLATE FOR A TRADEMARK LICENSE
extent of its use. AGREEMENT
5. Consideration: The agreement should
provide for commercial terms such as the TRADEMARK LICENSE AGREEMENT
payment of royalties, escalations, etc. to be
received by the licensor in lieu of the license This TRADEMARK LICENSE AGREEMENT is made
rights granted to the licensee. as of [●] day of [●], Between [●] having its principal
office at [●] (hereinafter referred to as “LICENSOR”)
and [●], a company incorporated and registered
under the laws of [●] having its registered office at [●]
(hereinafter referred to as “LICENSEE) and each of

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which are hereinafter referred to as a “Party” and accepts license to use the Trademark,
both of which are herein referred to as the “Parties”: solely in connection with the [●]
purpose.
WHEREAS, LICENSOR is owner of the Trademark [●]
details of the trademark [●] (hereinafter referred to ii) The LICENSEE agrees to use the
as the “said trademark”) pending under the Indian Trademark in the manner prescribed
Trade and Merchandise Marks Act, 1999 details herein in. All rights, opportunities and
whereof are set out in Annexure “A”, in respect of approvals not expressly granted to
goods/services set out in the said Annexure “A” and LICENSEE under this Agreement are
possesses valuable goodwill of the businesses reserved by LICENSOR.
associated therewith due to extensive use of the said
Trademark. iii) LICENSEE agrees that it shall not
grant any sublicenses to use the said
WHEREAS, LICENSEE desires to obtain a written Trademark.
license from LICENSOR to use the said
1.2. License Fee
WHEREAS, LICENSOR is willing to permit LICENSEE In consideration of the rights granted to LICENSEE
to make use of the said Trademark, upon and in
relation to [●] under this Agreement, LICENSEE shall
pay LICENSOR, a licensing fee of [●].
NOW, THEREFORE, in consideration of the premises
and the mutual covenants expressed herein, and 2. USE OF TRADEMARK
intending to be legally bound, the Parties agree as 2.1. LICENSEE acknowledges the validity of
follows: the Trademark and LICENSOR’s sole and
exclusive right, title and interest in and to
1. PERMISSION TO USE THE TRADEMARK the Trademark, including LICENSOR’s
1.1. Grant of License right to register or to have registered, the
i) LICENSOR, to the extent it can Trademark.
lawfully do so, hereby grants to 2.2. LICENSEE agrees to ensure that its use of
LICENSEE during the term of this the Trademark is in accordance with the
Agreement, and LICENSEE hereby highest standards of ethical business
conduct and in a manner to promote and
maintain an excellent reputation for the

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said Trademark with persons dealing in 4. ASSIGNMENT:
any way with LICENSEE’S services, or This Trademark License may not be assigned or
business. otherwise transferred without express prior
2.3. LICENSEE agrees not to use the said written consent from LICENSOR.
Trademark in any manner which would
tend to disparage or degrade the 5. RETENTION OF OWNERSHIP
reputation associated therewith, or which
would impair LICENSOR’S rights therein LICENSEE acknowledges that LICENSOR is the
or its title thereto. owner of the Mark and that LICENSOR retains all
ownership rights, subject to the limited license
3. RIGHTS IN THE SAID TRADEMARK granted pursuant to this Trademark License
Agreement, and that LICENSOR makes no
3.1. LICENSEE acknowledges and agrees that representations or warranties, express or
LICENSEE’s right to use the said implied, except as expressly set forth in this
Trademark in relation to its business is Agreement. All usage of the name shall inure to
dependent at all times upon LICENSOR’S the benefit of LICENSOR. LICENSOR has the
authorization and continued consent right, but not the obligation, to apply to register
thereto. the Mark, in all forms and variations, as a
trademark or service mark, as the case may be,
3.2. LICENSEE agrees to execute, with trademark authorities as LICENSOR shall, in
acknowledge and deliver all documents its sole discretion, determine. LICENSEE shall
and do all things which may be requested cooperate with LICENSOR to sign all documents,
by LICENSOR to assist LICENSOR to provide adequate specimens and information,
establish, maintain and safeguard all and to take all steps reasonably necessary to
rights of ownership in and to the said allow LICENSOR to register the Mark as so
Trademark, both during the term of this determined.
Agreement and after the expiration or
termination thereof.

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6. RESPONSIBILITY FOR LICENSED PRODUCTS/ LICENSOR from any loss, liability, damage, cost
SERVICES or expense arising out of any claims or suits which
LICENSEE shall be solely responsible for and may be brought or made against LICENSOR by
assume all costs and liabilities related to: (i) the reason of: (i) any breach of LICENSEE’S covenants
quality of the licensed products and services and undertakings hereunder; (ii) any
bearing the Mark, (ii) any defect in or of licensed unauthorized use of the Mark; (iii) any breach of
products (whether such defect be in materials, LICENSEE’S responsibilities or promises set forth
workmanship or design) or failure of the licensed in Section 6 hereof; (iv) LICENSEE’S non-
services, (iii) product liability of the licensed compliance with any applicable laws or with any
products, (iv) conformance of licensed other applicable regulations; and (v) any product
products/services with all applicable laws, rules, liability, any alleged defect in materials or
regulations and standards, including health and workmanship, alleged inherent dangers (whether
agricultural regulations, and (v) the promotion, obvious or hidden) in the licensed products or the
sale, documentation and marketing of licensed use thereof.
products/services. LICENSEE shall be solely
responsible for the payment and discharge of any 8. DURATION
taxes or duties relating to any transactions of This Agreement shall become effective on the
LICENSEE, its subsidiaries, employees, date first above written, as the effective date and
contractors, agents or sub-licensees, in shall be valid until [●]. The Parties would be at
connection with the manufacture, use, liberty to extend the Agreement on suitable
distribution, or sale, of licensed products or terms of Agreement by exchange of letters and
services. such other formalities as desired by the first
Party.
7. LICENSEE PROTECTION OF LICENSOR
During the term of this Trademark License 9. CONFIDENTIALITY
Agreement, and continuing after the expiration During the term of this Agreement and thereafter
or termination of this Agreement, Licensee shall LICENSEE shall keep confidential all information
indemnify, reimburse, hold harmless and defend relating to and arising out of this Agreement.

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10. NOTICES made in writing and executed by duly
authorized officers or representatives of
10.1. All notices permitted or required to be the Parties hereto.
given under the provisions of this
Agreement shall be deemed sufficiently 11.4. The paragraph headings are for
given if written and delivered personally convenience only and shall not be used to
or sent to the other Party by registered interpret, construe or affect in any way,
post at the following addresses: the provisions of this Agreement.

LICENSEE: [●] IN WITNESS WHEREOF, the Parties hereto have
executed this Agreement by their duly authorized
LICENSOR: [●] officers or representatives as of the date above
written.
10.2. Unless otherwise provided herein, all
such notices shall be deemed to have been
given as of the date they are personally WITNESS 1
delivered, or sent by registered post.

11. INTERPRETATION AND MODIFICATION LICENSOR
Name:
11.1. This Agreement shall be governed by and Designation:
interpreted in accordance with the laws
of India, and the Parties agree to submit to WITNESS 2
the jurisdiction of the Courts of Delhi.

11.2. The failure of either Party to insist upon LICENSEE
strict performance or any of the terms of Name:
this Agreement shall not be deemed a Designation:
waiver of any subsequent breach or
default of those terms. CONCLUSION
Assignment and Licensing of brands are considerable
11.3. No modification, amendment, issues and proper strategizing may open vistas of
supplement to or waiver of this opportunities for all, a licensor, a licensee, an assignor
Agreement or any of its provisions shall and an assignee. Both concepts involve a degree of
be binding upon the parties hereto unless

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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.

i Section 2 (1) (zb) of the Trade Marks Act, 1999 v Section 41 of The Trade Marks Act, 1999.
ii Section 2 (1) (b) of the Trade Marks Act, 1999. vi Ng, D. L. a. P. W., 2010. Intersect between Intellectual
iii Section 37 of The Trade Marks Act, 1999.
iv Section 40 of The Trade Marks Act, 1999. Property Law and Competition Law. Journal of Management.
vii Black’s Law Dictionary, p. 743 (7th Edition) (1998).

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