It is the transfer of rights, titles, and interests in a trademark, and it is defined as an assignment in writing, signed by the parties.
The Trade Marks Act, 1999 defines Assignment and Transmission respectively in Sections 2(1) (b) and 2(1)(zc). A “assignment” is defined in section 2(1) (b) as an act of the parties concerned in writing. It is defined in section 2(1)(zc) that a “transmission” means the transfer by operation of law, as well as any other mode of transfer, excluding assignment.
Trademarks Act,1999, sections 37 to 45 and trademarks rules 68 to 79 contain provisions regarding trademark assignment and transmission.
The meaning of trademark assignment
Specifically, a trademark assignment replaces the original owner of the trademark with a new owner for a recognized word, phrase, logo, or design. The assignor of the trademark is called the assignor, and the assignee is called the assignee.
It occurs when the owner transfers his or her right, title, and interest in a trademark. In other words, it occurs when the business’s goodwill is transferred. Such a transfer of ownership has to be recorded in the Register of Trademarks if the trademark is registered. A assignment in trademark can be used to assign a trademark.
Assigning or transferring a trademark in India can be done in a number of ways:
- Assign to another entity
- Assignment on a partial basis
- An assignment with goodwill
- The assignment of goodwill without consideration
Certain assignments are prohibited by the Trademark Act, 1999, such as
- An assignment of trademarks creates exclusive rights for more than one person with respect to the same goods or services or similar goods or services
- It also restricts the assignment of trademarks, resulting in the same trademark being used simultaneously by different people in different parts of the country.
Registration and un-registration of trademarks:
Section 39 of the Trademark Act, 1999 stipulates that unregistered trademarks may be further allotted or transmitted with or without goodwill attached.
In Section 38 of the Trademark Act, 1999, it states that trademarks can be assigned with or without the goodwill of the business.
Trademark Assignment Agreement Procedure:
- In order to assign a trademark, either the assignee or the assignor must make an application. The application must include all the details of the transfer and must be made under form TM-P as specified in Rule 75 of Trademark Rules 2017.
- The application must be filed with the Registrar of trademarks within three months of acquiring the proprietorship.
- A trademark assignment with goodwill or a trademark assignment with registered status requires direction from the Registrar of the trademark before the expiration of 3 months.
- In order to assign a trademark, the Registrar will specify the advertisement. After that, the applicant has to publish the advertisement accordingly. A copy of the advertisement as well as the Registrar’s direction should also be included with the applicant’s application.
- Following the Registrar’s approval of all documents, the trademark will be officially transferred from the original owner to the new owner.
- Assignees are required to register as new proprietors in the trademark register. Following registration, assignees can use the trademark according to the terms of the agreement.