Trademark Assignment

Trademark Assignment

Author : Keerti Singh

Introduction:

When we talk about the business world, ‘trade’ is the rear-view mirror of it, which is always clearer than the windshield.

As beings, though we are possessive about our belongings but for survival we rely on trade of items, right from the start of ‘barter system’ till present. Similarly, a ‘Trademark’ of a company, is an intellectual property whose ownership could be transferred from one person to another, just as easily as of any other immovable or movable material.

The process by which a trademark owner hands over the ownership rights of his trademark to someone else, is known as ‘Trademark Assignment’, which in India is dealt under ‘The Trade Mark Act, 1999’.

Lawfully speaking, according to Section 37 of The Trade Mark Act, 1999 trademark assignment is stated as a transfer of an owner’s right, title and interest in trademark or brand mark.

Types of Trademark Assignment:

While discussing about the topic, it is important to get a brief idea about the branches of that particular theme, thus, following are the types of trademark assignment-

• Complete Assignment; wherein the complete rights of a registered trademark are transferred to the purchasing party like rights of further transfer, royalties earning rights etc.
• Partial Assignment; is when the ownership is limited to a certain level after the transfer to another party, like limited only to certain products or services.
• Assignment with Goodwill; Like humans carve respect, the respect of a company is denoted by its Goodwill. In this kind of assignment, the value of the trademark is also transferred along with the rights associated to it.
• Assignment without Goodwill; in this the owner restricts the rights of the purchasing party, this means the value of the trademark is not transferred, prohibiting the buyer to use the brand of an existing product being used for another new product. Thus, it is also called as ‘gross assignment’.

Procedure Involved:

The following route has to be followed for taking into consideration the successful assignment of a trademark-

1. First things first, an application has to be written for the assignment of the trademark, this plea could be written by either side by the assignee or by the assignor, mentioning all the required details for the transfer, mentioned under form TM-P.
2. After the successful completion of application drafting, the document is to be submitted with the registrar of the trademark; also, the same is to be done within the 6 months of attainment of proprietorship.
3. When the trademark assignment is done with the goodwill mark or registered mark; the direction of the registrar is mandatory before the expiry of 6 months.
4. As per the advertisement of the purchased trademark is concerned, the specification of such trademark for advertisement is prescribed by the registrar, after that the applicant could move forward with the specified advertisement process and also has to submit a copy of the advertisement along with the registrar’s direction, in the office of the registrar.
5. At last, once the registrar approves and is contented with the submitted documents, he shall officially transfer the trademark from original owner to the purchasing candidate.
6. Finally, after this whole procedure, the assignee is eligible to use the trademark as per the terms of the agreement.

Things to keep in mind:

Small errors could cause hindrance in the long procedure, thus, the following things are to be kept in mind-

• The application must be in writing.
• The parties must be identified as assignor and assignee.
• The trademark which is to be assigned should match with the relevant application and registration.
• The date of the assignment should be taken care of.
• The agreement must be duly executed.
• In case of goodwill, the transfer of trademark must be included.

Conclusion:

The ride of a business life is filled with ups and downs and if you are not given an opportunity, you need to open a door for yourself. The trademark assignment of a brand opens several opportunities along with proper planning and duly provided rights to the purchasing party, with not only the brand lives but also both the parties benefits.