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Assignment of Trademark

Assignment of Trademark

Assignment has been defined in Section 2(1)(b) of the Trademarks Act, 1999. According to this section, an assignment has to be in writing and has to be executed by both the assignor and assignee. The assignor or the registered proprietor can assign the trademark for consideration under section 37 of the Act. 

When does an assignment occur?

An assignment occurs when the ownership of the trademark is transferred from the assignor to the assignee along with or without the goodwill of the business. In the case of registered trademarks, the assignment has to be recorded in the Trademark Registry.

A mark can be assigned in the following ways:

  1. Complete assignment: In this type of assignment, the owner of trademarks assigns all the rights with respect to the mark along with its ownership to the assignee. The assignee thereafter can further assign, license and earn royalties through the use of such trademark.
  2. Assignment but with respect to some goods/services: The owner here assigns the trademark only with respect to some goods or services. This is also known as partial assignment. For example: A brand that uses its trademark for both bakery and grocery supplies can decide to assign the grocery products to the assignee while keeping ownership of the bakery products.
  3. Assignment with goodwill: Where the rights and value of a trademark that is associated with the product is also transferred. For example: A being the registered proprietor of the brand “swachh” in respect of cleaning substances sells the brand to B in the same class, i.e., cleaning substances, thus, allowing B to use the brand in the same class as the previous owner.
  4. Assignment without goodwill: Here the assignor assigns the trademark without the goodwill of the brand. For example: A, being the proprietor of brand ‘Swach’ in respect of cleaning substances, assigns the mark to B. Here B cannot use the brand with respect to cleaning substances but can use it with respect to any different product.

The assignment is subject to the provisions of chapter V of the Trademarks Act, 1999, they are as follows:

  • A trademark is not assignable if as a result of such assignment there subists exclusive rights in more than one persons concerned.
  • A trademark is not assignable if it results in multiple people using the trademark in different parts of the country.

Registration of Assignment

Section 45 of the act lays down the process for registration of assignment. A person entitled to assignment should apply to the registrar in the prescribed manner to register his title. The Registrar after receiving the application will register him as the proprietor of the trademark with respect to the goods or services in which the assignment has been made.

The Registrar may further require the applicant to produce evidence or further evidence in proof of title if there is any reasonable doubt about the veracity of any statement or document produced.

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