Trademark is an intellectual property, just like any other physical property. Trademark can be transferred just like any other physical property. The transfer of a trademark is called the Trademark Assignment or licensing of the trademark.
The transfer of a trademark can be temporary through the form of licensing or permanent through the form of Assignment.
In layman's language, Assignment means the transfer of title, rights, interest and property benefits from one person to another. The person who transfers trademark rights is called "Assignor", and the person who receives trademark rights is called "Assignee."
As per Section 2(1)(b) of the Trade Marks Act, 1999, "Assignment" means an assignment in writing by the act of the parties concerned.
Section 37 of the Trade Marks Act, 1999 specifies that the Registered owner of the trademark shall have the power to assign a trade mark and to give effectual receipt for any consideration for such Assignment.
As per section 39 of the Trademark Act, 1999, an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned.
All rights reserved with the trademark as transferred to another entity, including the rights to earn royalties and further transfer etc., the proprietor of a brand sells his mark completely through an agreement to the assignee; after this assignor does not retain any rights concerning the brand.
In the case of partial Assignment, transfer of ownership is limited to certain services or goods solely. The registered owner can retain the right to earn royalties, transfer etc.
For example, Mr A, proprietor of a brand used for tea and biscuit Mr A assigns the rights in the brand concerning only biscuits to Mr B and retains the rights in the brand concerning tea.
Where the registered owner assigns the value, rights and entitlements associated with a trademark to the assignee with goodwill, after taking over the goodwill, the assignee is free to use the trademark assigned to him for all goods or services, including for the goods or services which the registered owner previously used. Such Assignment is termed as Assignment with Goodwill of Business.
For Example, Mr A, the proprietor of a brand "Bata" relating to footwear, sells his brand to Mr B so that Mr B can use the brand "Bata" concerning footwear as Mr B manufactures any other products.
All rights and value of the trademark are assigned to the assignee (buyer) without transferring the right to use the trademark for the class of goods or services previously used by the registered trademark owner. In simple language, the assigner or receiver will use an equal trademark in dissimilar goods and services. It is also known as gross Assignment.
For example, Mr A, the proprietor of a brand "Bata" relating to footwear, sells his brand to Mr B such that Mr B will not be able to use the mark "Bata" concerning footwear but can use this brand for any other products being manufactured by it. In such case, the goodwill associated with the brand "Bata" for footwear is not transferred to Mr B, and Mr B will be required to create distinct goodwill of brand "Bata" for any other product or service.
Section 40 of the Trade Marks Act, 1999 specifies that multiple exclusive rights would not be created in more than one person concerning the same or similar goods or services or the same description of goods or services since it would deceive or create confusion in the minds of the general public with average memory.
Section 41 of the Trade Marks Act, 1999, provides that assigning scattered right in different parts of India is not allowed. Assignment of the trade mark to different people to use the marks in different parts of the country and Assignment of a trademark to different people to use the mark in different parts of the country is restricted.
A trademark assignment agreement specifies transferring a trademark owner's rights, title, and interest associated with a service mark or trademark. It empowers the assignor to permanently transfer all of his intellectual property rights to the assignee in exchange for a defined amount. The assignor will no longer hold any control, involvement, or claim on the transferred rights.
|S.No.||Particulars||Applicable form||Government fees|
|1||Assignment with the Goodwill of Business|
|(I)||Trademark Pending for Registration||TM-M||Rs.1,000||Rs.900|
|2||Assignment without the Goodwill of Business|
|(I)||Trademark Pending for Registration||TM-M||Rs.1,000||Rs.900|
The first step is to apply for the trademark assignment with the Registrar of Trademarks. The plea can be made by the assignee, assignor, or jointly. Furnish all the required details of the transfer under above mention form TM-P or TM-M along with prescribed fees. The same is required to be filed within the 6 months of acquisition of proprietorship.
Obtaining direction for the advertisement of the Registrar is mandatory before the expiry of six months in case trademark assignment is done without the business's goodwill.
The Registrar of the trademark will specify the advertisement of trademark assignment. Once the specification is done, the applicant shall make the advertisement accordingly.
The applicant must submit a copy of the application and the advertisement to the Registrar's office.
After due satisfaction of the Registrar, the Registrar shall enter the details of the assignee as the proprietor of the trademark (subsequent proprietor) assigned to him in respect of goods or services for which the Assignment has been made.
Where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the Assignment or transmission until a competent court has decided the parties' rights.
Registrar shall dispose of the application for registration of Assignment of a trademark within three months from the date of receipt of application.
The assignor terminates to have his rights or any interest in the trademark at the moment when the assignment deed is executed, irrespective of the fact that the name of the assignee has not been entered in the record of the Registrar of trademarks.
Section 45 of the Act provides that the assignee shall apply before the Registrar of the trademarks to register his title. However, this does not mean that the recording of the Assignment of trademark asserts all rights or interests of the assignee. The assignee of a trademark is entitled to file a civil suit, even though the recording of the Assignment of the registered trademark is pending before the Registrar.
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The words Assignment and Transmission can be utilized interchangeably. The assignment is the transfer of ownership to an individual trademark. Contrarily the term "transfer" refers to an agreement that retains the Trademark's ownership but permits another person to use a portion of the Trademark but not the complete Trademark.
The document granting the Trademark is to be signed by either the owner or assignor of the Trademark to the benefit of the assignee or the new owner who has the rights to the property of the Trademark. The Trademarks Office must register the trademark assignment to reflect the new ownership.
Unregistered Trademark section 39 of the Trade Marks Act, 1999, states that trademarks may be assigned in conjunction with the goodwill or reputation of the company. The request needs to be submitted in the form TM 16 to allow trademarks that have not been registered to be transferred.
Assignment Recordation places the USPTO on notice by the USPTO concerning the ownership of Intellectual Property. Following the rules that are outlined in the MPEP, Patents must possess the characteristics of personal property. Patents for inventions are granting a property right on behalf of the person who invented it.
Trademarks that contain or include things that are likely to harm the religious sensibilities of any section or class of people in India. Trademarks that include or contain offensive or scandalous material. Suppose the use of the name is forbidden following the Emblems and Names (Prevention of Improper Use) Act 1950.