Licensing involves permitted use by a person on his own goods or services of a trade mark belonging to a proprietor, provided the proprietor exercises the quality control and authorizes the application of the trade mark on such goods and services.
Permitted Use and Registered User
The 1999 Act makes substantial changes in the provisions related to registered users and permitted use. Sec. 2(1)(r) of the Trademarks Act, 1999 defines two types of permitted use by third parties. One is permitted use, by registration of the third party as registered user; the other is permitted use by the third party without registration as a registered user, but subject to certain conditions.
The provisions as to “registered user” are contained in Sec. 48 to Sec. 53. A person may use the registered trade mark as “registered user” of the trade mark. Subject to the provisions of Section 49, a person other than the registered proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in which the trademark is registered. Any use of the trade mark by the registered user is deemed to be the use of the trade mark by the registered proprietor of the mark.
Case Law: Cycle Corporation of India v. T.I. Raleigh Industries Pvt. Ltd. 21 IPLR 20 (Cal)
The Calcutta High Court held that “the provisions relating to registration of registered user contained in the Act were enacted to protect both the proprietor and the user of the trade mark”.
“Permitted user” of a registered trade mark by a person other than the registered user is allowed under the following conditions:
- The trademark must remain registered for the time being;
- The registered proprietor should consent to use by a written agreement;
- The use must comply with any conditions or limitations to which such use is subject and to which the registration of the mark is subject.
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