Intellectual Property Rights - Law and Practice · Trademarks

Assignment and Licensing of Trademark in India

Updated 11 October 2026 · Fact-checked

A registered proprietor has the exclusive right to use the mark for the registered goods or services and to sue for infringement (Section 28). The mark can be assigned or transmitted, subject to Sections 40 and 41, and the new owner must apply under Section 45. A licensee is registered as a registered user under Sections 48 and 49.

Understand Rights Conferred, Assignment and Licensing

Registration gives the proprietor an exclusive right to use the trademark for the goods or services it is registered for, and to obtain relief for infringement. This right is subject to any conditions and limitations entered on the register. This is Section 28(1) and (2).

If two persons are registered proprietors of identical or nearly resembling marks, registration alone gives neither of them exclusive rights against the other. Each still has the same rights against everyone else. This is Section 28(3).

A trademark is property, so it can change hands. Assignment is a transfer by agreement. Transmission is a transfer by operation of law, such as on death or succession. In both cases the new owner must apply to the Registrar to register title (Section 45). Until an application is filed, the assignment or transmission is ineffective against a person who acquires a conflicting interest without knowing of it (Section 45(4)).

The law blocks transfers that would split the mark into rival exclusive rights. Section 40 bars a transfer that would leave exclusive rights in more than one person for same or associated goods or services, under identical or nearly resembling marks, where use would be likely to deceive or cause confusion. Section 41 bars a transfer that would create exclusive rights in different parts of India for the same or similar goods or services. Both have safeguards, covered below.

Licensing keeps ownership with the proprietor. The licensee is registered as a registered user (Sections 48 and 49). Use by a registered user is treated as use by the proprietor. A registered user gets no assignable or transmissible right (Section 54). So the key contrast is that an assignee becomes the owner, while a registered user only has permitted use.

Key rules to remember

Rights of registered proprietor: Exclusive right to use for registered goods/services + right to relief for infringement, subject to conditions and limitations on the register; Section 28(1) and (2). Valid registration is required.
Same or similar registered marks: Registration alone gives no exclusive right against the other proprietor; each has full rights against third parties; Section 28(3). Subject to conditions or limitations on the register.
Registering title: New owner by assignment or transmission must apply to the Registrar to register title; Section 45(1). Until the application is filed, the transfer is ineffective against a person acquiring a conflicting interest without knowledge (Section 45(4)).
Bar on multiple exclusive rights: No assignment or transmission if it creates exclusive rights in more than one person for same, same description or associated goods/services, with identical or nearly resembling marks, likely to deceive or cause confusion; Section 40(1). Proviso: valid if the rights cannot be exercised by two or more persons in the same market (India other than for export, same export market, services).
Statement of case: Proprietor may submit a statement of case; Registrar may certify whether the proposed assignment is valid under Section 40(1); Section 40(2). Conclusive, subject to appeal and fraud or misrepresentation. For a favourable certificate, title application must be made within six months of the certificate.
Territorial split bar: No assignment or transmission creating exclusive rights in different parts of India for the same or similar goods/services under identical or nearly resembling marks; Section 41. Registrar may approve if not contrary to public interest; title application within six months of approval.
Registered user: Joint application by proprietor and proposed user, with written agreement and affidavit; Sections 48 and 49. Affidavit covers relationship, degree of control, goods or services, conditions and duration.
Registered user limits: No assignable or transmissible right; permitted use is deemed use by the proprietor; Sections 54 and 48(2).
Suing by registered user: Registered user may sue in own name, joining proprietor as defendant, subject to agreement; Section 52. Proprietor not liable for costs unless he appears and takes part.

How to solve Rights Conferred, Assignment and Licensing questions

Use this order for any case-based question on rights, assignment or licensing. Always tie your answer to the facts given.

1Identify who holds what: registered proprietor, assignee, transmittee, licensee or registered user, and whether the mark is registered and for which goods or services.
2State the proprietor's rights under Section 28 and any conditions or limitations on the register.
3Decide whether the facts show assignment or transmission, or only licensing (ownership retained, permitted use, control by proprietor).
4For assignment, test it against Section 40 (same or similar goods, similar marks, likelihood of confusion) and Section 41 (exclusive rights split by territory in India).
5Check the safeguards: the Section 40 proviso and statement of case, and Registrar approval under Section 41 on public interest.
6For licensing, check Section 49 requirements: joint application, written agreement, affidavit with control particulars, goods or services, conditions and duration.
7Apply the consequences: register title within time under Section 45, no transfer right for a registered user (Section 54), suit rights under Section 52.
8Conclude clearly, in one or two lines, with the section on which your conclusion rests.

Quickest way: Assign, transmit or license in four checks

When to use it: Use it for short-note questions or when time is tight in a case question.

Ownership moves? Then it is assignment or transmission. Ownership stays? Then it is licensing via a registered user.
Assignment: ask whether it leaves two rival exclusive owners (Section 40) or splits India territorially (Section 41).
If yes, say it is barred, then give the exit: Section 40 proviso or certificate, or Section 41 Registrar approval.
Finish with the paperwork: Section 45 application for an assignee, Section 49 joint application for a registered user.

Common mistakes in Rights Conferred, Assignment and Licensing

Treating a licensee as an owner who can assign the mark.
Students mix up permitted use with ownership.
Fix: Quote Section 54: a registered user has no assignable or transmissible right to use the mark.
Saying any assignment of a mark for a limited territory is void.
Students remember the bar in Section 41 and forget the proviso.
Fix: Add that the Registrar may approve if use would not be contrary to public interest, and title must be applied for within six months of approval.
Applying Section 40 without the confusion test.
Students read only the headline of the section.
Fix: Show that the goods or services are the same or associated, the marks are identical or nearly resembling, and use would be likely to deceive or cause confusion.
Believing an unregistered assignee is fully protected.
Students think the deed alone settles priority.
Fix: State Section 45(4): until the application is filed, the transfer is ineffective against a person acquiring a conflicting interest without knowledge.
Saying a registered user applies alone.
Students assume the licensee files its own request.
Fix: Section 49(1) needs a joint application by the registered proprietor and the proposed user, with the agreement and affidavit.
Forgetting that a registered user can sue.
Students think only the proprietor can enforce.
Fix: Cite Section 52: the user may sue in his own name, subject to agreement, making the proprietor a defendant.

Worked examples

Example 1

Sundaram Foods Pvt Ltd of Chennai owns the registered mark SUNRICH for packaged snacks. It proposes to assign SUNRICH for Tamil Nadu only to Kaveri Snacks LLP, and keep it for the rest of India. Both would use the same mark for snacks. Advise.

Show the solution

Rights: Under Section 28, Sundaram has the exclusive right to use SUNRICH for snacks, and the right to relief for infringement.
Issue: After the proposed assignment, Kaveri would hold an exclusive right for Tamil Nadu and Sundaram for the rest of India, for the same goods under an identical mark.
Rule: Section 41 bars an assignment that creates exclusive rights in different parts of India in this way, notwithstanding Sections 38 and 39.
Safeguard: The proviso lets the proprietor apply to the Registrar, who may approve if satisfied that use would not be contrary to public interest.
Compliance: If approved, the title application under Section 45 must be made within six months of the approval, otherwise the protection against invalidity is lost.

Answer: The assignment as proposed is barred by Section 41. It can proceed only if the Registrar approves it as not contrary to public interest, and Kaveri applies to register title within six months of approval.

Example 2

Meera Textiles, the registered proprietor of the mark MEERA for sarees, permits Anand Weavers to use it under a written agreement and control. Anand wants to register as a registered user, sell the right to Bhavna Silks, and sue an infringer. Advise on each.

Show the solution

Registration: Section 49 requires a joint application by Meera Textiles and Anand, with the written agreement and an affidavit covering the relationship, degree of control, goods, conditions and duration.
Effect: The Registrar registers Anand as a registered user for the goods he is satisfied about (Sections 48 and 49(2)). Anand's permitted use is deemed use by Meera.
Sale to Bhavna: Section 54 says a registered user gets no assignable or transmissible right to use the mark, so Anand cannot transfer it.
Suit: Under Section 52, Anand may sue for infringement in his own name, subject to any agreement, making Meera a defendant. Meera is not liable for costs unless it appears and takes part.

Answer: Anand can be registered through a joint application under Section 49. He cannot assign the right to Bhavna (Section 54). He can sue in his own name, joining Meera as defendant, subject to the agreement (Section 52).

Exam tips

Write the section number beside every rule. Case answers earn marks for provision, analysis and conclusion.
Keep a short contrast ready: assignment moves ownership and needs a Section 45 application; licensing keeps ownership and uses Sections 48 and 49.
When a facts-based question mentions a territory split or two owners of similar marks, test Sections 40 and 41 before anything else.
Always mention the exit routes: Section 40 proviso and statement of case, and Section 41 Registrar approval. Examiners look for them.
Do not quote time periods other than the six months given in the sections, and tie it to the correct event.

Practice questions from Trademarks

Rights Conferred, Assignment and Licensing: frequently asked questions

What is the difference between assignment and licensing of a trademark?

Assignment transfers ownership of the mark, and the assignee applies to register title under Section 45. Licensing leaves ownership with the proprietor. The licensee is registered as a registered user with permitted use, and gets no right to assign it (Section 54).

Who can be a registered user of a trademark?

A person other than the registered proprietor, for any or all of the goods or services in the registration (Section 48(1)). The proprietor and the proposed user must apply jointly with the agreement and an affidavit (Section 49).

Can a registered user sue for infringement?

Yes, subject to any agreement between the parties. Under Section 52, the registered user sues in his own name and makes the registered proprietor a defendant. His rights are concurrent with the proprietor's.

Why must the new owner register the assignment?

Section 45(1) requires the new owner to apply to the Registrar to register title. Under Section 45(4), until the application is filed, the assignment is ineffective against a person who acquires a conflicting interest without knowing of it.