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Trademark Assignment


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Trademark Assignment


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 trademarks..

What is Procedure for assignment ?

Assignment of the unregistered mark:-

Section 39 stipulates that unregistered trade mark could also be allotted or transmitted with or while not the goodwill of the business involved. An invitation has got to be created on type TM-16 for an unregistered trademark to be allotted or transferred.

Assignment of a registered trademark:-

Section 38 stipulates that trade Marks are often either allotted fully or transmitted partly, with or while not the goodwill of the business. All transmissions or assignments should be registered with the Registrar of Trade Marks on type twenty-three or twenty-four of the Trade Marks. (Rule sixty-eight of the logos rule, 2002).

Types of Trademark Assignment



Complete assignment

In this, all rights are totally moved by the owner to the assignee. The assignee has got all the rights including rights such right to further transfer and right to earn royalties.



Partial assignment

In this type, the assignment can be made to the assignee only with respect to some goods/services. The transfer is restricted to some specific goods/ services.


Assignment with goodwill

This refers to the transfer of goodwill of the product with the trademark. The valuation of goodwill is calculated differently in this.



Assignment without goodwill

This is the type of the assignment in which the goodwill of the product is not transferred along with the assignment of the trademark. The owner of the brand restricts the rights of the assignee and does not allow him to use such trademark of the brand for the products being used by the assignor. Such an assignment is also referred to as a gross assignment.

When the Trademark can be Assigned

It can be assigned in the following situations:-



Death of the Trademark owner

When the owner i.e. assignor dies, it’s ownership passes to the successor of the previous owners in a will or estate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.



Sale of business

Like other properties , intellectual properties are also the assets for the company. Even the trademark is also sellable along with the company. Provided, it has to be registered under the company’s name. If a company acquires a business along with the trade mark rights with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.


Change of the ownership of the business

When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.



Change in form of business

Whenever there is a change in business plan or it’s form or structure, an assignment is a boon for those businesses

Essentials of assigning a Trademark

For completion of the assignment of trademark, there are a few basic requirements that need to be fulfilled by the parties.


  • The parties must identify the type of assignment they wish to have, either with or without goodwill.
  • The trademark assignment agreement must be in writing;
  • Proper Identification of the parties to the assignment, that is, the assignor and the assignee;
  • Details and Identification of the Mark(s) to be assigned;
  • Identify the effective date of the assignment;
  • Be duly executed, i.e. it must be signed by all the parties to the assignment,
  • Form TM-P should be duly filled and submitted to the registrar along with the trademark assignment agreement between the parties.
  • The trademark should be transferred for a valid consideration;

Benefits

It is beneficial as