Quick Tour (Trademark Assignment)

Know more about Trademark Assignment

A Trademark Assignment is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party (“assignor”) transfers to the receiving party (“assignee”) its property rights in the mark. An assignment differs from a license, which is the grant of permission to use a mark in some manner but does not transfer any rights of ownership in the mark.

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.

 

Brief Details about Trademark Assignment

A mark may be assigned or transferred to another entity in any of the following manners:

1) Complete Assignment to another entity- The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc. (E.g. X, the proprietor of a brand, sells his mark completely through an agreement to Y. After this X does not retain any rights with respect to the brand.)

 

2) Assignment to another entity but with respect to only some of the goods/services- The transfer of ownership is restricted to specific products or services only. (E.g. P, the proprietor of a brand used for jams and jellies and dairy products. P assigns the rights in the brand with respect to only dairy products to Q and retains the rights in the brand with respect to jams and jellies.) This is called partial assignment.

 

3) Assignment with goodwill- Such assignment is where the rights and value of a trademark as associated with the product is also transferred to another entity.(E.g. P, the proprietor of a brand "Shudh" relating to dairy products, sells his brand to Q such that Q will be able to use the brand "Shudh" with respect to dairy products as well as any other products it manufactures.)

 

4) Assignment without goodwill- Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer. (E.g. P, the proprietor of a brand "Shudh" relating to dairy products, sells his brand to Q such that Q will not be able to use the mark "Shudh" with respect to dairy products but can use this brand for any other products being manufactured by it. In such case the goodwill which is associated with brand "Shudh" for dairy products is not transferred to Q and Q will be required to create distinct goodwill of brand "Shudh" for any other product or service like Restaurant wherein Q proposes to use this brand.). In many jurisdictions like United States, assignment of mark without goodwill is not allowed at all. India on the other hand allows assignment without goodwill.

1

Drafting of Trademark Assignment Agreement

2

Preparation of application for Trademark Assignment

3

Filing of application Trademark Assignment

4

Payment of Fees

5

Approval by Registry for the submitted application

Advantages

Brand creation involves a lot of money, time and hard work. With the assignment of Trademark in India, the trademark owner(s) can encash the value of a brand which until now existed only on papers. The combined efforts create more value and the assignor can always put appropriate restrictions.
In case of any trademark-related dispute, the legal rights of the assignee would easily be established through the trademark assignment agreement. The Registry ensures that all the checks are in place by examining the validity of all the clauses mentioned in the agreement and publishing the assignment in the Trade Marks Journal.
The assignee has the advantage of dealing in an already existing and established a brand name. The time, efforts and investment for creating brand value are saved for the assignee.
In the case of licensing, the assignor’s business increases as more vendors join to contribute in brand building. The brand value will propel with the combined efforts of assignor and assignee.

Disadvantages

There are no disadvantages.