India: Trade Mark Licensing in India

Last Updated: 12 March 2018
Practice Guide by S.S. Rana & Co. Advocates

Licensing of Unregistered Trade marks

The Indian Trade Marks Act provides provision for licensing of only registered Trade mark. Thus , the licensing of an unregistered Trade mark, thought cannot be registered cannot be registered with the Trade Marks Registry, the same can be affected through a valid license agreement between the parties.

Further, the Courts of India have declared licensing of an unregistered Trade mark to be unlawful and governed by common law. The Supreme Court of India cleared the position on this subject in Gujrat Bottling Co. V Coca Cola Company [1996 (16) PTC 89(SC)] holding, so for connection in course of  trade with the Trade mark continues to exist between the goods and the proprietor of the mark, licensing of Trade marks whether registered or unregistered mark may be permitted.

Licensing of Registered Trade marks

The Trade Marks Act 1999  "permitted use means not only the use by a third person of a registered Trade mark as registered user, but also the use by a third person of a registered Trade mark with  the consent of the registered proprietor in written agreement without registering that person as  a registered user".   However,  the license for use of unregistered Trade marks is governed as per agreement executed by the Proprietor and the Licensee under the contract Act / common law. It is permissible to license an unregistered Trade mark. 

Permitted use without recordal of Registered User is permissible under the Trade Marks Act 1999, which came into force on September 15, 2003. The details of registrations owned by the Registered Proprietor in India are to be mentioned in the written agreement and permitted use will be in respect of services and/ or goods covered under those registrations only.

A license agreement has to provide for quality control by the licensor by including such as:

Quality Control monitoring- A licensor may require access to a licensee's facilities, raw materials, finished products and records to monitor the licensee's adherence to the licensor's quality standards.

Trade mark Usage-The licensor may specify the manner in which the Trade mark will be used on or in connection with the goods and services of the licensee and on advertising and promotional materials.

Grant- It is important that this clause clearly specifies the Trade marks to be licensed, the exclusive or non-exclusive nature of the license, the geographical territory within which the license will operate, the duration and the area of activity or field of business for which the license has been granted.

Indemnity: It is important that the licensee indemnifies the licensee for any loss of reputation or goodwill resulting from the use of the mark in contravention of the Brand Usage Guidelines or other quality control provisions.

Termination: The Licensor should ensure during agreement that it gets a broad termination right to terminate the license agreement .It is also critical that the licensee negotiates a sufficient "sell off" period to sell off any licensed inventory, pursuant to termination of the license agreement. The Agreement may provide conditions in which the arrangement may be terminated.


Recording a license of Trade mark is not mandatory as per the provisions of the Trade Marks Act, 1999. However, it is advisable to record the license Agreement. The License agreement recorded with the Registrar of Trade Marks will have evidentiary value to prove use, which can be done for registered marks, as use by the registered user will inure to the benefit of the registered proprietor. Certified copies of the entries in the Register can be admitted in evidence in all courts and in all proceedings without further proof or production of original documents. Whereas, it is difficult to prove the permitted use without production of original written agreement in the Court /Tribunal.

The registered user agreement functions to lessen the proof if the registered proprietor would need to establish a license relationship. If registered proprietor records the registered user document in India, the license relationship is “of record” in the Trade marks Registry. This would entitle registered proprietor to a presumption that the license is in effect and that the use under the license inures to the benefit of the registered proprietor. The registered proprietor would not need to offer detailed testimony about the license and its execution to establish its prima facie case. It is beneficial as licensor can rely upon his licensee use to avoid a cancellation charge and it is also beneficial in case of any opposition proceedings before the Trade Marks registry or litigation before the court.


According to Section 49 of the Trade mark Act 1999 the licensor and licensee shall jointly apply in writing to the registrar in the prescribed manner for the application for recordal of license agreement in respect of registered Trade marks only. Pending applications cannot be recorded in the agreement. The agreement is to be in writing and duly authenticated and need not be legalized. However if the document is not original, then a certified copy would be required.


  1. Registered user agreement -To be duly stamped as per the Stamp Act and signed by the Registered proprietor and Registered user and notarized before a Notary Public.
  2. Affidavit on behalf of Registered Proprietor - To be printed on Indian stamp paper and executed before Notary Public accompanied by Apostille certificate.
  3. TM-28 on plain paper to be signed by the Register Proprietor and proposed Registered user
  4. Power of Attorney duly executed by the Registered Proprietor before a Notary Public
  5. Power of Attorney duly executed by the Registered User before a Notary public


The Act under Section 50 provides that the registration of registered user may be varied or cancelled inter alia, on the grounds that the registered user has used the Trade mark not in accordance with the agreement or the proprietor/ user has failed to disclose any material facts.


The registered proprietor along with registered user can avail the benefits of Sections 134 & 135 for filing suit for infringement of trade mark in the court, within the local limit of whose jurisdiction, the registered proprietor and or registered user carries on business or personally works for gain and not at the different locations, where the infringements take place..

Section 52  provides that subject to any agreement subsisting between the parties, a  registered user  may institute  proceedings  for infringement, in his own name as if be were the registered proprietor making the registered proper a defendant.

Whereas the Section 53 states that an unregistered licensee has no right to institute any proceeding for infringement, unlike the registered user under section 52.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Contact the Author?
Click here to email the Author
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Other India Advice Centres
Insolvency and Restructuring
Arbitration, Litigation and Conciliation
More Advice Centers
Significant Recent Cases
The latest IP news courtesy of S.S. Rana & Co.
Useful Resources
Useful IP Articles and Publications courtesy of S.S. Rana & Co.
Useful links related to patents and industrial IP rights, government resources, and association resources.
Useful links related to patents and industrial IP rights, global and regional IP offices and organisations.
Upcoming Events
A calendar of past and future events by S.S. Rana & Co.
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions