Assignment of Trademark

Trademark Assignment

Assignment of a trademark means the transfer of the owner’s right, title, and interest with respect to the trademark. Assignment is defined as an assignment in writing by act of the parties concerned.

Assignment and Transmission have been defined under Section 2(1) (b) and 2(1)( zc) of the Trade Marks Act, 1999 respectively. Section 2(1) (b) defines “assignment” as an assignment in writing by act of the parties concerned. Under section 2(1)(zc) “transmission” means the transmission by operation of law, and any other mode of transfer, not being assignment.

The provisions concerning assignment and transmission of trademark are contained in section 37 to 45 if the Trademarks Act,1999 read with rule 68 to 79 of the trademarks rules.

Assignment of Trademark - Meaning

A trademark assignment is a written document which helps to transfer a recognized word, phrase, and symbol or design from the original owner to another owner. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

The assignment of a trademark occurs when there is a transfer of the owner’s right, title, and interest with respect to the trademark. In another way, we can say it is the transfer of ownership with or without the goodwill of the business. In case the trademark is registered, such an assignment has to be recorded in the Register of Trademark. One can assign a trademark through a trademark assignment agreement.

There are different ways to assign or transfer a trademark in India:

• Complete Assignment To Another Entity
• Partial Assignment
• Assignment With Goodwill
• Assignment Without Goodwill

The Trademark Act, 1999 puts restrictions on certain assignments like

• There is a restriction on trademark assignment, which results in the creation of exclusive rights for more than one person with respect to the same goods or services or for similar goods or services
• The Act also puts a restriction on the assignment of the trademark, which results in different people using the same trademark in different parts of the country at the same time simultaneously.

Assignment of Registered and Unregistered Trademarks:

The Trademark Act, 1999 under section 39 stipulates that any unregistered trademark can be further allotted or transmitted with or without the goodwill.

Section 38 of the Trademark Act, 1999 states that about allotment and transmission of the trademark with or without the goodwill of the business. It states that a trademark can be assigned in part with or without goodwill

Procedure For Trademark Assignment Agreement:

1. The first step is to make an application for the assignment of trademark either by the assignee or the assignor or both of them. The application should mention all the details of the transfer and be made under form TM-P as mentioned under Rule 75 of Trademark rules 2017.
2. Once the application is complete, file the same with the Registrar of the trademark. It has to be done within 3 months of acquisition of proprietorship
3. When there is a trademark assignment with goodwill or of a registered trademark, the direction from the Registrar of a trademark is mandatory before an expiry of 3 months (can be extended)
4. The Registrar will specify the advertisement of the trademark assignment. After which the applicant has to make the advertisement accordingly. Copy of advertisement along with a copy of the Registrar’s direction should also be submitted.
5. After the Registrar is satisfied with all the documentation, he shall officially transfer the trademark from the original to the new owner.
6. The name of the Assignee i.e., the new owner is to be registered in the register as a new proprietor. After this, the assignee can use the trademark as per the terms of the agreement.