Q.1 What is the difference between assignment and licensing of rights?
Ans. The main difference between the two is that in a license the person
granting permission (Licensor) retains an interest in the property being
licensed, whereas in an assignment the assignor transfers his rights in the
property being assigned.
In intellectual property, a license may grant a licensee to use a patent,
trademark, software, etc. without being sued. Licenses come in many
different flavors and pretty much any type of provision can be worked into
a license such as the length of the license, the territory where a license may
apply, the nature of the license (exclusive vs. non-exclusive), etc. If an
inventor/start-up company obtains a patent, they may license their patent
to another person or company in exchange for royalties. As previously
discussed, the rights given in different licensees may vary and overlap. For
example, if company A obtained a patent, they can have a non-exclusive
license to company B for 10 years in North America, and have a non-
exclusive license to company C for 5 years without territorial exclusions. As
such, different terms for licensees may be contracted with different
companies. If company A granted an exclusive license to company B for the
full length of the patent along with derivative works, then the license will
essentially work as an assignment.
A major difference between licenses and assignments is that assignments
are required to be in writing whereas licenses may be applied without
writing. Specifically, patents may be licenses orally (in some circumstances)
whereas assignments for patents must be in writing and filed with the
USPTO. One such example of an implied license is if a user purchases a
product at a retail store. It is implied that they are able to use the product or
display it in pictures, etc. As such there is an implied license that grants the
user limited rights without any writing.
Because assignments grant an assignee full ownership of a piece of
property, typically to acquire an assignment will cost more than to acquire a
license.
Q2. What is licensing and assignment of copyright?
Ans. There are two ways that a copyright owner can transfer some or all of his or her
copyright rights: through a license or an assignment.
In an assignment of copyright rights, the owner sells his or her ownership rights to another
party and has no control over how the third party uses those rights. A copyright assignment
is sometimes referred to as a sales agreement for copyright.
The buyer (assignee) can then use the copyrighted work or do whatever he or she wants
with it. He or she all of the assigned rights that the original owner had.
A valid assignment of copyright must be in writing and signed by, or on behalf of, the
copyright owner/assignor. The subject of the assignment must be clear as to what copyright
is being assigned in which work(s).
In a license of copyright rights, the owner maintains his or her copyright ownership rights, but
allows another party (the licensee) to exercise some of those rights without the licensee’s
actions being considered copyright infringement. A license is often preferred over an
assignment when the copyright holder wishes to maintain and exercise some ownership
control over the rights and how the licensee uses the copyright holder’s rights.
For example, a typical software license agreement is a copyright license agreement. The
software copyright owner grants the user/licensee the right to use the software in a specified,
restricted manner. In return, the user/licensee may agree to limit his or her use of the
software in various ways and to pay the copyright owner a license fee.
Unlike a copyright assignment, a copyright license does not have to be in a signed writing. A
license can be oral or arise by implication when considering all of the facts and
circumstances surrounding the transaction between the copyright owner and the purported
licensee.
If you own a copyright in a work that you are thinking about assigning, you should consider
whether to license your copyright instead, thus allowing you to retain ownership, and license
only certain rights to the other party.
For additional information about the difference between copyright assignments and license,
Q3. Explain registration process of trademark.
Ans.Step 1: The first step is the selection of a trademark.
Step 2: It is advisable for the applicant to search the trademark records registry and ensures
that the intended trademark does not resemble or identical the registered mark.
Step 3: The search can be done online or through the trademark office.
Step 4: It is advisable to consult an experienced lawyer as they are well-versed in their
profession and are be able to conduct an exhaustive search. Hire a lawyer if you think you
have right on a particular trademark but if it is already registered.
After thorough research, the application for registration in the trademark can be made in the
prescribed form.
Frequently Asked Questions for trademark registration process:
Ques1: If someone has a similar word trademarked, is there any chance I can get that
trademark? You can, if you design a unique logo and include the name in it. E.g. BMW
whose name is within the logo or you can even add the small prefix to name. For e.g. If your
name is Usha and you want to have the registered trademark “Khaitan”, you can use U-
Solution 1: You can, if you design a unique logo and include the name in it or can add the
small prefix to name. For e.g. BMW whose name is within the logo. For e.g. If your name is
Usha and you want to have the registered trademark “Khaitan”, you can use U-
Example 1: BMW whose name is within their logo.
Example 2: Usha is the name and you want a registered trademark as “Khaitan”.You can
use U-Khaitan. It is advisable to select a unique and distinct name for the registration of the
demark.
Ques 2: With which name I can file the trademark?
Solution 2: You can file it under any name. Generally, entrepreneurs prefer to register the
trademark in their own name. As using company’s name it would mean that the shareholders
own it too.
2. Filling of Form TM-1
Time to Complete: 2 days
Cost: Rs. 4,000 (per application per class) + lawyer’s fees
Step 1: The application for the registration of the trademark should contain the following
particulars:
“Mark” chosen to be registered,
Trademark owner’s information,
List of goods or services for which the trademark will be used.
Step 2: The application for a trademark can be made both online and offline.
Online application: A Class III Digital Signature Certificate is required.
Offline application: An application to the Offices of the Trademark Registry is required.
Step 3: Once the application for the trademark registration is made, the Registrar will search
for the uniqueness of name and will check the registered marks and pending applications to
ascertain whether any such marks exists and to know the register-ability of proposed mark
as per the law.
Step 4: In case, of objection by the registrar for acceptance of application or propose to
accept the application with certain term and conditions, amendments, limitations, etc., the
same is communicated in writing to the applicant and the applicant has to communicate back
regarding their rectification within a period of three months.
3. Cost
Step 1: So now, that you have your name, on to filing of Form TM-1. Each such form would
contain only one application. So if you are registering the trademark in two classes (i.e.
sectors): let’s say Relentless Garments and Relentless Computer, as well as having a
separate logo for each, you would be making four applications.
Step 2: With government fees Rs. 4,000 /-per application, the total would amount to Rs.
16,000.
Step 3: Lawyer’s fee starts at Rs. 200/- per application will amount to at least Rs. 8,000/-for
4 applications.
Step 4: In the case of the logos, a jpeg image needs to be provided.
Step 5: The acknowledgment, which mentions the filing date and application number, is
received immediately, but it will take two more days to obtain the Original Representation
Sheet.
4. Use your Trademark
Now you can use the Mark, But the use of symbol would take up to 2 years if everything
goes smoothly.
5. Issue of Examination Report
Time to Complete: 3 to 6 months
Cost: Free, but Rs. 4000 to Rs. 6000 in the case of any objection.
Now begins the process of questioning your claim to the trademark. First, the government
will verify whether the application has any objections: Here’s what happens if there is:
No Objection: If there is no objection against the application made, then a letter of
acceptance will be issued commonly known as TLA.
If there is an Objection
Reasons for objections as follows:
If a proposed trademark is similar/identical or a copy of already registered trademark.
If a word use is obscene/unlawful and may hurt the sentiment of particular religion /religions.
If you wish to challenge the objection, then an additional fee Rs. 3,000 as well as lawyer’s
fee which is a minimum of Rs. 4,000 to Rs. 5,000 depending on the lawyer is charged.
The lawyer will frame a response to the objection that has arisen and will present the
distinctiveness of the trademark. Hence, it is required for a lawyer to be well informed and
aware of business activities. If a government discarded the objection, the trademark will be
eligible for advertisement in trade Mark journal.
Q4. How to transfer trademark rights in india?
Ans. A trademark has more intangible value than tangible one, but in the long run, it can be
quantifiably converted. It is why many brands and business look into transferring trademark
rights from their firm to another. This article dives into the process of transferring the IP
rights of a brand, logo, or name!
The understanding of Intellectual Property has evolved with time in India. The conception of
Intellectual Property and rights associated therein is now seen from the perspective of
intangible assets. This is the reason why the past decade has seen so much growth in legal
understanding around the topic of IP. The conception of IP as an asset is the right approach
and also involves within the ambit of sale, transfer and licensing of such property. Trademark
is one of the fastest evolving IP rights in India. Trademark signifies a brand name (e.g.: Tata
Tea, Red Label). The worth of a trademark is equivalent to the popularity that it assumes
over time. Consumers begin to associate with the goods and services of a particular brand. It
is the goodwill that a brand or a mark earns over the years.
