Kinds of Trademark Assignment procedures prevalent in India

by Gaurav Bansal Company Registration Consultants in Delhi

A Trademark, as an Intellectual Property of a Business, can be, like any physical property such as land or car, sold, licensed, and transferred, per the defined legal procedure. The Indian Trademark Act empowers a Brand owner to transfer his or her trademark rights by Assignment or Licensing. In the case of Trademark Assignment, there is a change in the ownership of the registered Logo. For licensing, the trademark rights continue to vest with the Trademark Proprietor. In licensing, the acquirer can have only a few restricted rights to use the Logo. Let us learn about the Trademark Assignment categories in detail.

Ways in which you can assign a Trademark in India

The Assignment here means the transfer of ownership of the Logo from the Assignor to the Assignee. The transfer can happen in two ways: with or without the business's Goodwill. The assignment deed must be recorded in the Register of Trademarks for a registered Trademark Logo. You can assign your registered Trademark in any of the following manners:

Complete Assignment of Trademark Rights

In the Complete Assignment of the Trademark, the proprietor transfers all the trademark rights to another entity. This transfer includes the following transfer of rights:

· Right to further Assignment

· Right to Earn Royalties

After the transfer, the proprietor of a brand or the Assignor does not retain any rights with respect to the brand.

Assignment w.r.t. Goods or Services of the Assignor’s Brand

In this Partial Assignment of the Trademark, ownership transfer is restricted to specific products or services only. For instance, the proprietor of a certain brand deals in the production of Pickles and Murrabbas but assigns the rights in the brand w.r.t. only Pickles to a third party. In such a manner, they can retain the rights to the brand with respect to Murabba. It can be one of the elaborations for the Partial Assignment.

Assigning Trademark to establish Goodwill with the Assignee

Assignment with Goodwill means transferring the rights of a trademark associated with the product to another Business. Let us understand it with one of the examples. The proprietor of a brand relating to Pickles sells his brand to another entity In Goodwill. This entity can now use the brand name with respect to Pickles as well as Murabbas that the other Company Assignee company manufactures.

Assigning Trademark without Goodwill

The Assignment without Goodwill can also be termed a Gross Assignment. In such a scenario, the brand restricts the rights of the Assignee. Assignor does not let the Assignee use his brand for the products he originally used. This way, the Goodwill attached to the Assignor’s Brand in the Market is not transferred to the Assignee.

For instance, the proprietor of a brand relating to pickles sells his brand to another business where the latter cannot use the former’s Trademark with respect to Pickle products. Although, he can use the brand logo for other products being manufactured by the Assignee. Therefore, the Goodwill associated with the Assignor brand is not transferred to the Assignee. The Assignee must create his Goodwill of the brand logo for other products or services.

Is Trademark Assignment ubiquitous?

Many developed states, such as the United States, have prohibited the Assignment of Trademarks without Goodwill. However, The Authority permits the Assignment of Trademarks without Goodwill in India.

Restrictions on Trademark Assignment in India

The Trade Mark Act 1999 puts certain restrictions on the Assignment of registered Trademark Logos. The restrictions are put in force to counter the possibility of creating confusion among the general masses. Some of them are discussed in the following points:

The Registrar can restrict an Assignment if it results in the creation of Exclusive Rights for more than one person w.r.t. any of the similarities in the following:

· Goods & Services

· Description of Goods & Services

· Association of Goods & Services among themselves

Restriction can also stem from different people using the Trademark in different regions of the Nation concurrently.

For more on the Trademark Assignment procedure and kinds, connect with the IPR experts at Registrationwala.