ARTICLE
12 March 2018

Assignment and Licensing of a Registration

SR
S.S. Rana & Co. Advocates

Contributor

S.S. Rana & Co. is a Full-Service Law Firm with an emphasis on IPR, having its corporate office in New Delhi and branch offices in Mumbai, Bangalore, Chennai, Chandigarh, and Kolkata. The Firm is dedicated to its vision of proactively assisting its Fortune 500 clients worldwide as well as grassroot innovators, with highest quality legal services.
•Assignment is of two kinds. In a complete assignment, the owner of the trademark handovers all the rights pertaining to the trademark (including the right to further transfer and earn royalties to and from another entity).
Global Trademarks in SAARC Countries
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  1. Assignment of a Trademark
  • Assignment is of two kinds. In a complete assignment, the owner of the trademark handovers all the rights pertaining to the trademark (including the right to further transfer and earn royalties to and from another entity). In a partial assignment, the transfer of ownership is restricted to specific product or service only. In case of partial assignment assignor & assignee can both use the same trademark but for dissimilar goods or services.
  • The following details in the document will be required to solidify a valid assignment:

    • The name, address, and citizenship of the assignor and the assignee.
    • Specifications and details of the mark
    • Deed of assignment
    • The effective date of assignment
    • Signatures of the assignor and the assignee
    • Notarization of legal documents
  1. Licensing
  • The license to a mark is granted to allow others to use the mark without assigning the ownership of the mark per se and a license can be facilitated for all or some of the goods and services covered under the registered mark.  
  • Trademark licensing is advantageous to both, the licensor and the licensee. 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.
  • A registered Trademark can be licensed subject to the control of the owner of the mark over the manufacture and use of the products and services made and sold by the licensee. A registered Trademark can be licensed in Pakistan and the licensing can be made for a portion of the territory covered by the registered Trademark for some or all goods or services vested in the registered Trademark.
  • The following details in the document will be required to solidify a valid licensing:

    • The name, address, and citizenship of the licensor and the licensee.
    • Specifications and details of the mark
    • License agreement
    • The effective date of license
    • Signatures of the licensor and the licensee
    • Notarization of legal documents
Take Note
This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.
ARTICLE
12 March 2018

Assignment and Licensing of a Registration

Global Trademarks in SAARC Countries

Contributor

S.S. Rana & Co. is a Full-Service Law Firm with an emphasis on IPR, having its corporate office in New Delhi and branch offices in Mumbai, Bangalore, Chennai, Chandigarh, and Kolkata. The Firm is dedicated to its vision of proactively assisting its Fortune 500 clients worldwide as well as grassroot innovators, with highest quality legal services.

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