Assigning & Licensing IPR In India


Contributed by Rakesh Prabhu and Ramya Kumar

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

This article briefly sets out the parameters that must be met when considering assigning or licensing of IPR in India.

THE TRADEMARKS ACT 1999 Assignment

An assignment of a trademark must be in writing and with the consent of the Registrar under the Trademarks Act, 1999 (hereinafter referred to as "Trademark Act"). A registered/unregistered proprietor can assign a trademark with or without goodwill. An assignment is usually required to be made for a consideration. The application, which is in a prescribed format, can be submitted by either the Assignee or together with the Assignor, before the Registrar of Trademarks for registering the title of a person who becomes entitled by assignment to a registered trademark. The Assignee, after the assignment is complete, must apply to the Registrar of Trademarks to register his/her title and the Registrar...

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