Agreement for Use of Trade Mark

This Agreement is made at …….. this……. day of .……….

BETWEEN

M/s. XYZ Co. a Company incorporated under the laws of…………. and having its registered
office at .………………also known as ‘Licensor’, of the One Part

AND

M/s ABC Co. Ltd., a company registered under the Indian Companies Act, 1956, and having its
registered office at………….. also known as ‘Licensee’, of the Other Part.

WHEREAS Licensor is manufacturing a specialised article by the name of ………. and which is
sold by Licensor under a registered Trade Mark, the particulars of which are given in the
Schedule hereunder written.

AND WHEREAS Licensee is manufacturing the same Product with the know-how and expert or
technical advice and guidance of Licensor in India under a separate agreement entered into
between the parties hereto.

AND WHEREAS Licensor declares that the Trade Mark is duly registered under the laws in
………….. and is valid and subsisting and Licensor has a right to allow the same to be used by
any party outside the said Country.

AND WHEREAS Licensee has requested Licensor to allow Licensee to use the same Trade
Mark in the sale of the said Product in India and which Licensor has agreed to do on the
following terms and conditions agreed upon between the parties.

AND WHEREAS the Govt. of India has given its approval to this agreement as is evidenced by
the letter dated ………. of the Govt. of India in the Ministry of Commerce and Industry.

AND WHEREAS it is now proposed to record the said terms and conditions in the manner
following;
NOW IT IS AGREED BETWEEN THE PARTIES HERETO AS FOLLOWS:

1. Licensor agrees to allow and hereby grants the exclusive right to the Licensee hereunder, to
use the said Trade Mark mentioned in the Schedule hereunder, in relation to the said Product
manufactured and sold by Licensee in India during the during the period of this agreement.

2. Licensee shall get its name registered as the user of the said Trade Mark in India as required
by the Indian Law and Licensor will give its written consent to the application that will be made
by Licensee to the Registrar of Trade Marks in India for that purpose. All expenses required for
that purpose will be on the account of the Licensee.

3. Licensee will use the said Trade Mark only for sale of the said Product in India and not for any
other goods or anywhere outside India.

4. Licensor has agreed to allow the use of the said Trade Mark only if and so long as the said
Product is manufactured according to the specifications and standards laid down by Licensor and
with the help of the know-how supplied by Licensor to Licensee. If at any time, Licensor finds
that the said Product is not up to such specifications and standards Licensor will be entitled to
withdraw the license or permission granted by Licensor by this agreement and to cancel this
agreement giving three months’ prior notice to Licensee in that behalf.

5. In the event of the cancellation of this agreement under the above mentioned clause or any
other provision herein contained, Licensee will forthwith stop the usage of the said Trade Mark
and withdraw all advertisements, posters and other material referring to the said Trade Mark in
any manner. In such event, the registration of the Trade Mark for user will also be got cancelled
by Licensee. ,

6. In all advertisements. labels or packings, posters, and other material in which the said Trade
Mark is used, it will also be mentioned that the Trade Mark belongs to Licensor and Licensee is
allowed to use the same.

7. Licensee will be vigilant to see that the said Trade Mark or any other mark similar thereto is
not used or passed off by any other person as the Trade Mark of that person and in the event of
such use, shall take immediate legal action civil and/or criminal to prevent the use thereof or in
the event of its being used to claim damages for infringement thereof. Licensor will, in such
event execute a power of attorney in favour of Licensee authorising Licensee to take such action,
civil or criminal in the name of Licensor provided that such action shall not be taken without the
written consent of Licensor and if taken shall not be further prosecuted unless it is ratified by
Licensor in writing.

8. Except the right to use the said Trade Mark during the subsistence of this agreement. Licensee
shall not have or claim to have any other right to the said Trade Mark.

9. In consideration of the permission or license to use the said Trade Mark Licensee shall pay to
Licensor in the manner following:

XXXX

10. All payments to be made by one party hereto to the other under this agreement shall be
subject to the permission of the Reserve Bank of India and shall be made in the manner
sanctioned by the said Bank.

11. The said Letters of approval issued by the Government. of India hereinbefore recited and
hereto annexed, shall be deemed to form part of this agreement and any term of this agreement
which is contrary to or inconsistent with any term or condition of the said letter will be treated as
void and of no effect.

12. The duration of this agreement shall be a period of… years, subject to the other provisions
herein contained. The said period may be extended by mutual consent.

13. This agreement will be treated as terminated on the happening of any of the events below
mentioned;

(i) If any party hereto commits/alleged to have committed breach of any provisions of this
agreement and is served with a notice by the other party three months prior to the intended date
of termination by the other party and the former party has failed to amend the breach within the
said period of three months.
(ii) If any event occurs which will render the performance of this agreement impossible,
including any force majeure event.

(iii) If either Licensee or Licensor goes into either voluntary or compulsory liquidation according
to or under the law by which it is governed

(iv) If the parties hereto mutually agree to terminate this agreement.

14. All the sanctions, approvals, permissions, licenses and other requirements of the Government
of India and of any statutory authorities required for giving effect to all the terms and conditions.
of this agreement shall be obtained by Licensee.

15. In the event of any dispute or difference arising between the parties hereto or as to the rights
and obligations under this agreement or as to any claim, monetary or otherwise of one party
against the other or as to the interpretation and effect of any terms and conditions of this
agreement, an attempt shall be made to settle such dispute amicable by both parties, failing
which the difference shall be carried out in accordance with the rules and guidelines laid down in
the WIPO Arbitration Rules. The venue for such Arbitration shall be …………….

16. The validity of this agreement and the effect or meaning of the terms hereof will be decided
according to the Indian Law.

17. Any communication by one party to the other shall be made by registered post through
airmail, with acknowledgement due or by telex or fax or cable. In case the communication is
made by telex or fax or cable, the same will be subsequently but immediately thereafter
confirmed by written communication sent by registered post as aforesaid. Any evidence showing
the communication was posted or telex, fax or cable communication was made will be sufficient
to prove the posting or sending the communication.

18. In this agreement the expression Know-how shall include technical information such as
inventories, formulae, process, engineering and manufacturing skill, scientific data, calculations,
specifications, drawings, standards, sketches and all other relevant information and knowledge.

19. Each of the parties hereto shall be deemed to include its successors or permitted assigns.
IN WITNESS WHEREOF the Parties hereto have set their hands on the day and year mentioned
hereinabove first.

For & On behalf of

Licensor (name company)

______________________________

Mr. _______________

CEO

Witness: _______________

For & On behalf of

Licensee (name company)

Mr. _______________

Witness: ___________