What is Trademark Assignment In India?
Like every other intellectual property, trademark too can be transfered from one owner to the other. Temporary assignment of trademark is regarded as Licensing and permanent assignment is referred to as Trademark assignment. Trademark assignments are of two types – Complete assignment of trademarks and partial assignment of trademarks. Both complete and partial trademark assignment can be made with assignment of goodwill or without goodwill.
Complete Assignment
In the complete assignment of mark, the assignor (owner of the mark) transfers all rights on the mark to the assignee (receiving party). Upon assignment, the receiving party turns into the sole owner with all rights to sell, advertise, including the rights to transfer the mark to any other party.
Partial Assignment
In the partial assignment, the transfer of ownership confines uniquely to those products/services that are referenced in the Trademark Assignment Agreement. For example, if the assignor owns products A and B, transfers the ownership rights just of A to the receiving party and holds that of B, it is called partial assignment.
Assignment with Goodwill
In trademark assignment with goodwill, both goodwill and rights connected with the product/service are transferred to the receiving party. For example, when assignor transfers trademark with goodwill, the receiver has the right to use the goodwill to boost both similar and dissimilar products/services as required.
Assignment without Goodwill
In assignment without goodwill, the receiver does not have the legal right to use the goodwill for the products similar to those of the assignor. Nevertheless, the receiver can use the goodwill to sell products which do not relate to that of the assignor. To be precise, both assignee and assignor can jointly use similar marks provided their products are different.
Process of Trademark Assignment at The Registry
Assignment of Unregistered Mark
As per Section 39, an unregistered mark can be transferred or assigned with or without the goodwill of the respective business. Form TM-M must be submitted at the registry to record assignment of the unregistered trademark.