Licensing of trade mark and its connected issues
Sajan
(Querist) 25 March 2012
This query is : Resolved
Hi,
I am new to this forum, kindly help me out with the following Queries.
1. Can a licensor of a Trademark also continue to use the Trademark after the same has been licensed?
2. Can the Licensor grant further use to other parties also?
3. What is the applicable stamp duty for a license agreement for a trademark?
4. Can a Licensor and Licensee market the same product using the same trademark in the same local market ?
5. Now A who is a partnership firm, the original owner of the Trademark has stock of products worth Rs.3 Crore. Now if A gives licence to B ( a Company) to use its Trademark and market the product from April 1, 2012. Can A which has stock today continue and sell the existing stock in its own name after April 2012?
Raj Kumar Makkad
(Expert) 25 March 2012
1. No.
2. Yes, if the terms of the license do not change by doing so.
3. This information is required to be obtained from the Registry of Trademark.
4. It depends upon the understanding/agreement.
5. Legally there is no problem in doing so but much depends upon the mutual agreement.
Sajan
(Querist) 25 March 2012
Thanks for the prompt response Raj Kumar Sir.
Anil Kulkarni
(Expert) 26 March 2012
Dear Sajan,
I differ with Raj Kumar. The answers to your queries as I perceive are as follow:
1.It depends upon what type of licence you give. If it is exclusive licence, then generally exclusive licence excludes even the licencor. If it is non exclusive, all the licensees and the licencor may continue to use the property. However it would not be in the licencor to create competitors by issuing non exclusive licensees.
2.Answer lies in answer 1 above.
3.The agreement need to me made in Maharashtra on 100 Rs. non judicial stamp paper. You need to pay a fees of Rs.
4.Read explanation in 1 above. Instead you may ask the prospecting licensee to get a "Registered User" status as per provisions of TM Act.
5.Answer lies in 4 above. If you allow him to be a 'Registered user' you can control many thing as per provisions of TM Act.
Sajan
(Querist) 26 March 2012
Thank you anil kulkarni Sir.
Jai Karan Nagwan
(Expert) 15 April 2012
Mr. Kulkarni rightly replied. This is only the term of contract or agreement among the parties. In Commercial agreement both parties can determine the term of contract.
