“The term trademark assignment is defined under section 37 of the Trademark Act, 1999. As per the definition, the trademark assignment means transferring the owner’s right, interest, and title in a trademark and a brand mark.”
In simple words, Trademark assignment is defined as the part of a transfer of ownership of a trademark from one party to another. Any Trademark can be assigned when the ownership rights of such Trademark or brand, is transferred from one owner or party to another person. However, such assignment of a trademark can be done with or without the goodwill of the business.
In the case of a registered Trademark, such assignment is compulsory to be recorded in the Register of trademarks. A Trademark can be transferred through deeds, agreements etc. between two persons.
It usually involves a one-time payment. Such agreements are often called an assignment deed. In both cases i.e. in registered or unregistered trademark assignment, the assignee must apply to the Registrar within six months.
An assignment can also be partial which is commonly known as licensing. Further, it is assignable with or without the goodwill of the business either in respect of all goods or services or a part thereof. A trademark is usually assigned by the execution of an agreement between the parties known as the Trademark Assignment Agreement. The most important requirement for a valid assignment agreement is that it must show intention on the part of the assignor to transfer complete or partial ownership of the mark.
There are four ways through which a trademark can be assigned:
In this type of trademark assignment, all the rights of the registered trademark are assigned to a third party.
In Partial trademark assignment, the transfer of ownership of the trademark is restricted only to certain products/services as decided by the parties.
In this type of trademark assignment, the trademark owner transfers the trademark as well as the value associated with the product.
Here, the trademark owner restricts the rights of the assignee and doesn’t transfer the goodwill attached to the trademark.
There are restrictions on assigning trademarks to prevent parallel use and multiple territorial rights.
Where assignment results in exclusive rights in different persons for the same or similar goods/services.
Where assignment results in exclusive rights in different persons in different parts of India for the same or similar goods/services.
For a valid Trademark assignment, certain requirements must be fulfilled:
Similar to selling property, a trademark is transferred by assignment deed between the assignor and assignee.
Points to be included in Assignment Deed:
Assignment of Registered Trademark: Registered Trademark can be assignable and transmissible, whether with or without the goodwill of the business.
Assignment of Unregistered Trademark: Unregistered Trademark may be assigned and transmitted with & without the goodwill.
Trademark Assignment involves transferring ownership rights, whereas Trademark Licensing grants restricted rights to use a trademark without changing ownership.
A. A trademark assignment happens when the ownership rights of a trademark or brand are transferred from one party or owner to another person.
A. Yes, a registered trademark owner can file a civil suit for trademark infringement.
A. Yes, trademarks can be monetized through assignments and licensing.