Introduction
Trademark assignment means transferring your trademark to another person through trademark agreement the trademark is transferred and this is called trademark assignment. It refers to the assignment of the trademark ownership to another person. It can be with or without transfer of goodwill. It is not necessary to assign the trademark; a trademark should be registered. Even if trademark unregistered, it can be assigned. But in any of the case, the assignee has to apply to the registrar within six months. It is onetime payment.
Assignment of the trademark
The trademark assignment means that when one party confers or handover his ownership to another party. It should be with or without the transfer of goodwill. If the trademark is registered then it should be recorded in the register that the trademark is assigned. It is in the following manner :-
• Complete assignment to another entity – The owner transfers all his rights related to the trademark to another entity. This includes all types of rights like right to transfer further, right to earn royalties.
Under this only partial agreement also comes, it refers to the agreement when the party has goodwill in many brands. For instance, there is a brand called XYLO and it has varieties in salt and dairy products. Now the owner has assigns and transfer his trademark related to the dairy products to another party. Now another party is restraint for using the rights of the salt and only limited to dairy products.
• Assignment of the trademark with the goodwill-
It means that where an owner of the products assigns all the rights, liabilities and value related to the product to another party. For example, if a party A transfer his product and value and rights related to it also. Then another company is not bound to use that name specifically for that brand or product only but can use that goodwill for any other product.
• Assignment of the trademark without the goodwill –
Under this owner of the trademark restricts the buyer for using the goodwill attached to his product. It means that if you have buy the brand ” UPPO” then you cannot use that name for the same name but can use for another product.
The Trademark Act 1999, also puts restriction on assignment of the trademarks in the case of registered trademarks.
Agreements for transmission
The trademark is assigned to another entity in a legal and executed trademark assignment agreement. The drafting of the agreement should be in such a manner that:
• The rights of the owner should not be affected due to the obligations laid down
• It should be clearly mentioned in the agreement that whether the agreement is with or without goodwill
• The objective should be laid down of the trademark assignment
Assignment of an unregistered mark:
When it comes to assignment of unregistered trademark, A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred (Sec 39 depicts it).
Assignment of a registered trademark:
Sec 38 elaborates that all transfer must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks.
TRADEMARK LICENSING
The licensing of a mark is to allow others to use the mark without assigning the ownership and the same may be done for all or some of the goods and services covered. The Trademarks Act does not mention the term ‘License’, the concept under the Act is mentioned as that of a ‘Registered User’.
Trademark licensing is advantageous to both the parties. While the licensor enjoys its rights to the mark by getting the royalties for its use, the licensee is able to expand its market operations by using the brand and developing its reputation.
Conclusion
Assignment and Licensing of brands are considerable issues and proper strategizing may open vistas of opportunities for all, a licensor, a licensee, an assignor and an assignee. Both concepts involve a degree of planning for the future of the parties involved and the brand in question. The development of a brand, its propagation and its use, all lie in the hands of the proprietor of the brand and trademark and assignment and licensing are effective methods to manage the same.
If you are willing to assign the trademark, then it should be executed in a proper manner laid down under the Trademark Act,1999.
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