A monthly Trade and Investment Bulletin of Corporate Professionals for Indo- Japan Business Community.

1. Indo-Japan Trade & Investment
Bulletin
October Issue
Japan Desk, Corporate Professionals
2012

2. INDEX
Indo-Japan Trade & Investment Highlights
• India to Collaborate with Japan on RRE Trade
• The Indian Government Optimistic about Japan Lifting Ban on Import of Shrimps from
India
• The Indo-Japanese Trade Might Get Doubled by 2014
• India and Japan to Collaborate on Study on LNG Pricing
• The Pune Metro Project to be Funded by the Japanese Government
• JICA Honour for DMRC
• Lupin Limited Eyeing the Cancer Drugs in Japan
• Tata Capital and Century Tokyo Collaborate to Provide Leasing Solutions
• Japan’s Mitsui to Invest in Indian Healthcare Company Claris Lifesciences
• Japan’s Honda Motor Company to Expand the Two Wheeler Production Capacity in
India
• India and Japan to Increase Co-operation Especially in Security
• Bangalore to Witness an Upsurge of Hotels and Retail Outlets Especially for the Japanese
• Honda Cars India to Have a Series of Launches in the Coming Year
• Indo-Japanese Relationships not Limited to Trade/Investment
Knowledge Center
• Assignment & Licensing of Trademarks in India

3. Indo-Japan Trade & Investment Highlights
India to Collaborate with Japan on RRE Trade
India is soon going to sign an agreement with the Japanese government
which is expected to make the Indo-Japanese relationship even stronger.
This agreement which is hoped to kick-start the development of Rare
Earth Elements (RRE) in India will be signed in November.
RREs are a set of 17 chemical elements which are typically dispersed throughout the earth but
are not found readily as minerals. These are almost indispensable for producing products like
LCDs, aerospace components, microwaves, energy efficient light bulbs and medical equipment.
India, having one of the richest RRE reserves in the World, could not utilize its potential of RRE
production to the fullest because in 2004, China started producing RRE at lower prices compared
to India. With China and Japan facing serious issues over the Senkaku/Diaoyu islands, China’s
exports of RRE, especially to Japan have come down drastically affecting the Japanese hi-tech
manufacturing industry.
Supplementing India’s earlier decision to set up a REE extraction plant in Odisha, Indian Rare
Earths Limited and Toyota Tsusho from Japan have decided to set up a 12,000 tonne monazite
processing plant. Japan, the largest importer of rare earths has also decided to plough $1.3 billion
in India to fund alternate sources for RRE.
The Indian Government Optimistic about Japan Lifting its Ban on
Import of Shrimps from India
The Union Government is hopeful that Japan will lift its ban on importing
shrimps from India which the country had imposed a couple of months ago
due to presence of high levels of an anti-oxidant called ethoxyquin.
However, officials of Export Inspection Council of India (EICI) and Marine Products Export
Development Authority (MPEDA) have interacted with the health authorities and food safety
commission of Japan and have requested for taking back the decision. It was told by the officials
that Japan has no Maximum Residue Limit prescribed for shrimps and hence the decision is
based on faulty grounds.

4. It is surprising that India which has been exporting shrimps to a lot of countries worldwide since
past few decades faced such a problem now; especially when the country has used the same
methods for feeding and raising shrimps. It is hoped that this trade barrier will be overcome at
the earliest and will relieve almost 50,000 people in Odisha who are directly or indirectly
involved in this business.
The Indo-Japanese Trade Might Get Doubled by 2014
The bilateral trade between the countries might double to almost USD 25 billion by 2014. It has
been hoped that this will easily be achieved because there is huge scope of expansion in the
current state of the Indo-Japanese trade. Where India exports mainly mineral fuels and oils,
pearls, precious and semi precious stones, iron, steel and fish to Japan; it imports from the
country machinery appliances, medical and surgical equipments and articles made from iron and
steel.
India and Japan to Collaborate on Study on LNG Pricing
The Indian and Japanese Governments decided to start a joint
study on Liquefied Natural Gas (LNG) pricing in the Asia Pacific
market at the Sixth India-Japan Energy Dialogue between the
Planning Commission of India and the Japanese Ministry of
Economy, Trade and Industry.
The countries are going to collaborate on both the production and
the exploration activities to ensure a stable and cheaper supply of LNG. Apart from this, the
governments have also started a feasibility study of a project that aims to combine 2 power
generation technologies from coal.
The two countries also emphasized the importance of cooperation in the civil nuclear sector and
in enhancing the safety there in. India and Japan hope to consistently improve their relationship
based on similar collaborations. India will also be taking up the test run of Japanese projects
which have been aimed at improving and utilizing efficiently the basic energy resources of the
country like coal and water.
The Pune Metro Project to be Funded by the Japanese Government
India has received Overseas Development Assistance from Japan for various metro projects
undertaken in the country including those in Delhi, Mumbai, Chennai and Kolkata. Now the

5. Pune metro project which was set in motion through a Government last month is likely to get
financial support from the Japan International Co-operation Agency (JICA).
The mass transit project which has been estimated to cost around Rs. 2600 Crores (approx. $500
millions) will be collectively funded by the Central and the State Government, the Pune
Municipal Corporation and JICA. The construction of one of the few routes of the project is
targeted to be completed in the next 3 years.
JICA Honour for DMRC for Contribution to Indo-Japan Relations
Delhi Metro Rail Corporation has been awarded the
President’s Award by JICA for its contribution to the
promotion of Indo-Japan ties. The award is also recognition
of crucial role of Delhi metro in development of social,
economic and human resource in India. Delhi Metro has
been built with assistance of Japanese Government through
JICA and is often cited as the new age symbol of India-Japan partnership.
Lupin Limited Eyeing the Cancer Drugs in Japan
Lupin which operates in Japan through two fully owned subsidiaries namely Kyowa
Pharmaceutical Industry and I’rom Pharmaceuticals; is going to focus on oncology drugs in
Japan. It has a group of around 7-8 cancer drugs in its product mix which have been licensed to it
or have undergone collaborative development. The patents on these products worth $2 billion are
going to expire in the next 3-5 years and this will allow Lupin to operate
as a generic medicine player in Japan.
Lupin which has a presence in both oral and injectable drugs will be
expanding its manufacturing facilities in Japan. Apart from that it will be
focusing on marketing and set up a cancer product packaging facility to
target almost 400 cancer hospitals across Japan.
This has come in the wake of Japan’s decision in April to incentivize entities to promote generic
drugs in the country. It is hoped that Lupin will be able to double its sales in Japan to over Rs.
2600 Crores (approx. $500 million) in the next 5 years.

6. Tata Capital and Century Tokyo Collaborate to Provide
Leasing Solutions
Tata Capital’s wholly owned subsidiary Tata Capital
Financial Services and Japan’s Century Tokyo Leasing
Corporation shall enter into a business relationship to provide
leasing solutions.
The leasing solutions will pertain to the lease of equipment which is a market with a huge
potential and an annual growth rate of 25-30 percent. The venture will provide a plethora of
equipment leasing facilities across various industries. Though no equity structure has been
proposed for the venture so far, the relationship is based on Tata Capital’s extensive network and
Century Tokyo’s expertise in the field of leasing.
Japan’s Mitsui to Invest in Indian Healthcare Company Claris Lifesciences
Mitsui might invest up to Rs. 250 Crores (approx. $48 million) in Claris Lifesciences through a
stake sale of PE in the company or a Joint Venture between the two companies. Claris
Lifesciences is based in Gujarat and produces sterile injectables for various medical segments.
Present in 91 countries world over, Claris has investments form renowned institutions like Signet
Healthcare (a PE firm focused on health care), Morgan Stanley Asia and Barclay’s Capital
among others.
Japan’s Honda Motor Company to Expand the Two Wheeler Production Capacity in India
Honda Motorcycles and Scooters India, a unit of the main Japanese company is
aiming to become the lathes two wheeler maker in India by the year 2020. The
company plans to do this by adding 4-5 new factories so that the annual
production capacity goes up to 10 million units.
Honda India currently has 2 factories, one in Haryana and the other in Rajasthan. And there’s
another one which is being built in Karnataka. The planned factories are hoped to be set up in
Gujarat and Uttarakhand. Apart from this, the company also plans to set up a Technical Centre.
The decision has been taken keeping in mind the expected growth rate of the two wheeler
industry at 14% annually.

7. India and Japan to Increase Co-operation Especially in Security
During the Second India-Japan 2+2 Dialogue, the two countries discussed various issues
involving foreign policy and security; especially that concerning maritime, cyber space, outer
space, regional and international security. The dialogue revolved around the two countries
briefing each other about their respective policies on security and defence developed according
to their country’s security scenario.
Bangalore to Witness an Upsurge of Hotels and Retail Outlets Especially for the Japanese
With around 200 Japanese companies, almost 600 Japanese families and approximately 12,000
Japanese visitors to the city, Bangalore surely needs facilities which make the Japanese feel at
home.
The Karnataka Government is in talks to establish a residential area especially for people from
Japan on about 1000 acres of land, complete with accommodation, hospitals, schools, pagodas
and restaurants.
Japan’s Nippon Infrastructure Company is establishing
a 30-room business hotel exclusively for the Japanese
expats. Similarly, Toyota enterprises, a subsidiary of
the Toyota Motors Corporation has entered into a Joint
Venture with the owners of ‘The Chancery’ to take over
its 52 rooms and style them according to the Japanese
tastes. The hotel will also house a Japanese restaurant
and a spa.
Bangalore will also soon be a home to a chain of Kenkos which are Japanese health outlets
selling Japanese drugs, herbs accessories and skin and hair care products.
Honda Cars India to Have a Series of Launches in the Coming Year
Honda Cars India Ltd, a unit of Japan’s Motor Company is readying itself for a slew of launches
in the compact and premium segments. It will also be introducing the diesel variants of the cars
for which the parent company has independently developed the diesel engine.
An entire new range of cars is being readied and hence no diesel variants will be introduced in
the models currently offered by Honda. In fact, the company is also considering the possibility of
bringing a utility vehicle specially suited for India. With plans to focus heavily on the export of
cars from India, the company is strategizing to improve its position as a car maker in the country.

8. Indo-Japanese Relationships not Limited to Trade/Investment
An exquisite Sai Baba Temple in Ajmer, Rajasthan, organized the marriage of Industrialist S. K.
Lal’s daughter Nameeta with a Japanese groom Ukaako, son of Mitsuharo. With the marriage
conducted in a traditional Hindu ceremony and with the bride and groom dressed up in
traditional Indian attire, the wedding was attended by over 300 Japanese people who thoroughly
appreciated the Indian food and rituals.

9. Knowledge Center
Issue In Focus: Intellectual Property Rights
ASSIGNMENT & LICENSING OF TRADEMARKS IN INDIA
Just as in the case of physical property such as land, every owner of a Brand or Trademark has
the right to sell, license, and transfer its respective brand or trademark in accordance with legal
procedures. A Brand or Trademark owner can transfer his rights with respect to his trademark
either by way of assignment or by licensing. In India, The Trade Marks Act, 1999 deals with
assignment as well licensing of trademarks.
To put it summarily, in case of an assignment of a trademark, there is a change in the ownership
of the registered brand and in case of licensing, the right in the trade mark continues to vest with
the original owner but only few restricted rights to use the brand/mark are given to the third
party.
ASSIGNMENT OF A TRADEMARK
Assignment of a trademark occurs when the ownership of such mark as such, is transferred from
one party to another whether along with or without the goodwill of the business. In case of a
registered Trademark, such assignment is required to be recorded in the Register of trade marks.
A mark may be assigned or transferred to another entity in any of the following manners:

10. • Complete Assignment to another entity- The owner transfers all its rights with respect to a
mark to another entity, including the transfer of the rights such as right to further transfer, to
earn royalties, etc. (E.g. X, the proprietor of a brand, sells his mark completely through an
agreement to Y. After this X does not retain any rights with respect to the brand)
• Assignment to another entity but with respect to only some of the goods/ services- The
transfer of ownership is restricted to specific products or services only. (E.g. P, the proprietor
of a brand used for jams and jellies and dairy products. P assigns the rights in the brand with
respect to only dairy products to Q and retains the rights in the brand with respect to jams and
jellies.) This is called partial assignment.
• Assignment with goodwill- Such assignment is where the rights and value of a trademark as
associated with the product is also transferred to another entity. (E.g. P, the proprietor of a
brand “Shudh” relating to dairy products, sells his brand to Q such that Q will be able to use
the brand “Shudh” with respect to dairy products as well as any other products it
manufactures.)
• Assignment without goodwill- Such assignment also referred to as gross assignment, is
where the owner of the brand restricts the right of the buyer and does not allow him to use
such brand for the products being used by the original owner. Thus, the goodwill attached to
such brand with respect to the product already being sold under such brand, is not transferred
to the buyer. (E.g. P, the proprietor of a brand “Shudh” relating to dairy products, sells his
brand to Q such that Q will not be able to use the mark “Shudh” with respect to dairy
products but can use this brand for any other products being manufactured by it. In such case
the goodwill which is associated with brand “Shudh” for dairy products is not transferred to
Q and Q will be required to create distinct goodwill of brand “Shudh” for any other product
or service like Restaurant wherein Q proposes to use this brand.). In many jurisdictions
including United States, assignment of mark without goodwill is not allowed at all. India on
the other hand allows assignment without goodwill.

11. Further, in case of registered Trademarks, the Trade Mark Act, 1999 also puts certain restrictions
on the assignment of a registered trade mark wherein there exist possibilities of creating
confusion in the mind of public/users. Such restrictions are:
• Restriction on assignment that results in the creation of exclusive rights in more than one
persons with respect to the same goods or services, or for same description of goods or
services or such goods or services as associated with each other.
• Restriction on assignment that results in different people using the trademark in different
parts of the country simultaneously.
TRADEMARK LICENSING
The licensing of a mark is to allow others to use the mark without assigning the ownership and
the same may be done for all or some of the goods and services covered. The Trademarks Act
does not mention the term ‘License’, the concept under the Act is mentioned as that of a
‘Registered User’.
Trademark licensing is advantageous to both the parties. While the licensor enjoys its rights to
the mark by getting the royalties for its use, the licensee is able to expand its market operations
by using the brand and developing its reputation.
In case of Licensing, the licensor is open to license the rights over the trademark in manner it
may like. The Licensor can restrict the rights of the licensee in a trademark or brand with respect
to the products or services wherein the licensee can use such brand, with respect to time for
which it can use such mark, with respect to area within which it can use such mark etc.
AGREEMENTS FOR TRANSMISSION
A trade mark is generally assigned by way of a properly executed Trademark Assignment
Agreement which pertains to the transfer of the mark from one person or entity who is the owner
to another. It is to be ensured when drafting such agreement that:
 the rights of the owner of the brand are not detrimentally affected due to the obligations
contained.
 the requirement and decision regarding whether the assignment should be with or without the
goodwill of the business is explicitly mentioned and negotiated

12.  the agreement should be drafted keeping in mind the purpose of the transaction in question
A mark is licensed by way of a License Agreement. As per the Trade Mark Act, 1999, contrary
to the requirement in case of Assignment, the registration of license agreement with the
Trademark Registrar of a mark is voluntary and not compulsory, but it is advisable. Further, like
in an Assignment agreement, it is again very important that while drafting a License Agreement,
the rights and duties of licensee are distinctively pre determined and defined. This is important
not only to protect the rights of the Licensor in its own brand and to protect any misuse thereof,
but also to secure licensee with his rights to use such brand.
TO SUM UP…
Assignment and Licensing of brands are considerable issues and proper strategizing may open
vistas of opportunities for all, a licensor, a licensee, an assignor and an assignee. Both concepts
involve a degree of planning for the future of the parties involved and the brand in question. The
development of a brand, its propagation and its use, all lie in the hands of the proprietor of the
brand and trademark and assignment and licensing are effective methods to manage the same.

13. CONTACT US
Pankaj Singla
Japan Desk, Corporate Professionals
pankaj@indiacp.com DELHI (Head Office):
D-28, South Extension Part - I, New Delhi – 110049
D: +91-11-40622293
T: +91-11-40622200
M: +91-99715-08320 F: +91-11-40622201
E: info@indiacp.com
MUMBAI:
403-404, Churchgate Chambers, 5 New Marine
Lines, Mumbai-400020
T : +91 22 22624671
F : +91 22 22655712
FARIDABAD (DELHI NCR):
565, Sector-7B, Faridabad, Haryana-121006
T : +91 129 4061130
F : +91 129 2241017
BEDFORD (UK)
2-4 Mill Street, Bedford MK40 3HD U.K.
T : +44 (0) 2030063240
F : +44 (0) 2030063241
DISCLAIMER: The entire contents of this document have been developed on the basis of relevant statutory provisions and as per the
information available at the time of the preparation. Though the author has made utmost efforts to provide authentic information however, the
material contained in this document does not constitute/substitute professional advice that may be required before acting on any matter. The
document has been produced only for the informational purposes; the author and the firm expressly disclaim all and any liability to any person
who has read this document, or otherwise, in respect of anything, and of consequences of anything done, or omitted to be done by any such
person in reliance upon the contents of this document.