Introduction
Assignment of a trademark means the transfer of the owner’s rights, title, and interest of the trademark. According to Section 2(1) (b) and 2(1)( zc) of the Trade Marks Act, 1999 defined Assignment and Transmission, and Section 2(1), (b) defines “assignment” as an assignment in writing by an act of the parties concerned. Under section 2(1) (zc) which defines “transmission” that means the transmission by operation of law, and transfer by any other mode, not being assignment.
Sections 37 to 45 define the assignment and transmission of trademark and read with rules 68 to 79 which defines The Trademarks Act, of 1999.
Assignment of Trademark
A trademark assignment is a written document that helps transfer a recognized word, phrase, symbol, or design from the original owner to any other owner. The original owner of the trademark is called “the assignor,” and the future owner is called “the Assignee.”
When there is a transfer of the owner’s right, title, and interest concerning the trademark then the assignment of the trademark occurs, and also we can say that it is the transfer of ownership with or without the goodwill of the business. When the trademark is registered then an assignment has to be recorded in the Register of Trademarks. One can assign a trademark by an agreement of trademark assignment.
Who can assign a Trademark?
According to section 37 of the Trade Marks Act, 1999 in which states that the person registered as the owner of a trademark in the register of trademarks has the power to assign a trademark and receive consideration for such an assignment which means a trademark proprietor can assign a trademark to another person.
Types of Allocation of trademarks
There are four types of allocation of Trademarks which are given following:
1. Complete Allocation of trademarks: In this type of Allocation, the trademark owner transfers all the rights which means also the additional rights, duties, and ownership of their brand to the other person or assignee. After completing the assignment then the owner of the trademark completely loses all rights to the trademark, and the assignee or other person holds all the rights and ownership of the brand.
2. Partial trademark Allocation: In Partial trademark Allocation, trademark ownership means a transfer to a limited number of goods and services. The assignor holds all the rights over the portion to the assignee. Assignors have the absolute right to select the partial agreement. Assignors may use all these rights in their management and business operations.
3. Allocation of a trademark with Goodwill: The assignor can transfer the ownership of trademark rights and also the image-valued rights over the trademark. The assignee can use such a demonstration in the market position of the trademark to promote the products of the trademark.
4. Allocation of the trademark without Goodwill: The assignor may restrain the assignee from using the trademark in the business of the assignee and the assignee may also restrain the assignee from using the trademark in its product. The same trademark is used by both the assignee and assignor in different businesses. A gross trademark Allocation also covers the allocation of the trademark without goodwill. According to section 40 of the trademark Mark Act, there are many limitations on the Allocation that is already registered trademarks which may confuse the public.
Documents Required for Assignment of Trademark
Many documents must be submitted to the registrar of trademark along with form TM-P which is as follows: -
Trademark assignment agreement.
Trademark certificate.
No Objection Certificate from the assignor
Id Proof of the assignor and assignee.
Procedure for Trademark Assignment Agreement
Firstly, the trademark owner assigns his or her rights to the trademark by a trademark assignment agreement to the assignee.
The assignor or assignee, or both, can make a joint request in Form TM-P for the registration of the assignment by furnishing an application for a trademark assignment.
Form TM-P must be furnished with the registrar of the trademark within 6 months from the date of the assignment. The application can be furnished after six months of assignment, but the fee may fluctuate and it depends on the trademark assignment.
The registrar of trademarks directed that the assignment must be advertised in such a manner and within the period.
A copy of the advertisement and direction of registrars should be submitted to the registrar’s office of trademarks.
Upon the receipt of the trademark assignment application and need all necessary documents, the registrar of trademarks will register the assignee as the proprietor or owner of the trademark and record the conditions of the assignment in the register.
Conclusion
It concluded that when there is a transfer of the owner’s right, title, and interest concerning the trademark then the assignment of the trademark occurs, and also we can say that it is the transfer of ownership with or without the goodwill of the business. When the trademark is registered then an assignment has to be recorded in the Register of Trademarks. One can assign a trademark by an agreement of trademark assignment.
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