All You Should Know About Trademark Assignment Or Transmission

A trademark assignment transfers the owner’s title, rights, and interest in a trademark or service mark. The assignor transfers to the assignee its property rights in the mark. An assignment varies from a license, that is, allotting permission to use a mark in some manner but does not transfer any rights of proprietorship in the mark.

It becomes pertinent to apply for online logo registration to protect your brand and your products in the market from unauthorized uses. Section 37 acknowledges the registered owner’s rights to assign the trademark for any consideration and give a receipt. It offers that subject to the act’s provisions and to any rights appearing from the registrar to be vested in any other person. The owner of a trademark will have the power to assign the trademark and provide effectual receipts for any consideration for such assignment.

It means that a registered owner of a registered trademark can assign his/her rights to the trademark to any other person. A registered trademark is allowed to transfer or assign, whether with or without given business’s goodwill and concerning all of goods or services related to that trademark is registered or some only of those goods or services.

Assignment – section 2(1) of the trademarks act, 1999, specifies assignment as an assignment in writing by the act of concerned parties. It means that an assignment has to be in writing. An assignment would be through an instrument, and both parties should execute the instrument. The word used in definition by the act of concerned parties means that the assignor and assignee should execute the instrument, and any unilateral act will not constitute an assignment.

What is requisite to affect a valid assignment?

Though specific requisites vary by jurisdiction, few remains the same;

– It has to be in writing.

– Recognize parties to the assignment, that is, assignor and assignee.

– Recognize marks to be assigned and any other pertinent applications or registrations for the marks.

– Recognize the goods and services to be assigned (in few jurisdictions, all the goods and services in an application or registration have to be assigned).

– Consideration has to be given.

– Recognize the assignment’s effective date.

– Be duly executed (few jurisdictions need that it to be signed by all the parties to the assignment, while in others, execution by the assignor would suffice).

– Include the transfer of goodwill (needed in several jurisdictions). In India, for instance, a trademark can be assigned with or without goodwill. In contrast, in America, an assignment without goodwill will be considered as an assignment ‘in gross’ and considered invalid under the law.

A mark has to be assigned or transferred to another party in the following manner;

Complete assignment to another party – proprietor transfers all of its rights concerning a mark to another party, including transfer of rights like the right to further transfer, to earn royalties, and so forth. For example, A, the brand owner, sells her mark wholly through an agreement to B. After this, A will not retain any rights concerning the brand.

Assignment to another party but concerning only some of goods or services – the transfer of proprietorship is limited to particular goods or services only. Such as A, the owner of the brand used for chocolates and dairy products. ‘A’ assigns the rights in the brand concerning only daily products to B and retains the brand’s rights concerning chocolates. It is known as partial assignment.

Assignment with goodwill – such trademark assignment is where the rights and value of trademark as linked with the product is also transferred to another party like ‘A’ owner of the brand Labh relating to savouries, sells his brand to B such that B can use the brand Labh concerning savouries as well as any other products it manufactures.

The assignment without goodwill – it is also known as a gross assignment, where the proprietor of a brand limits the buyer’s right and does not permit him/her to use such brand for products being used by the original proprietor. Hence, the goodwill associated with such a brand concerning a product being sold under such a brand will not be transferred to the buyer. Such as A, owner of the brand Labh concerning savouries, sells his brand to B such that B cannot use the mark Labh concerning savouries but is allowed to utilise any manufactured products of the brand. In such cases, the goodwill linked with brand Labh for savouries will not be transferred to B, and B will be needed to create different goodwill of brand Labh for any other products or services like Hotel wherein B proposes to use this brand.

Limitation on assignment or transmission – section 40(1) of the trademarks act, 1999.

A trademark will not be assignable or transmissible in the case in that as a result of the assignment or transmission; there would exist prerogatives in more than one of the individuals concerned, to use the trademark, nearly resembling each other or similar trademark that is likely to cause confusion or deceive, involving;

– Same goods or services.

– Same description of goods or services.

– Goods or services or descriptions of which are linked with each other.

The registrar will issue a certificate if he/she does not find any objection with the application under section 40(1) of the trademarks act, 1999.

Registration of assignment.

Discretion has been given to the registrar under section 45(2) of the trademarks act, 1999. According to section 45 of the act, an assignment deed must be registered in an apt form with a trademark registry to bring the assignee as a proprietor of the trademark on the records.  

It is crucial to register the assignment of a trademark with the concerned registrar or authority. An assignee will not get rights assigned to him/her from the assignor without registration of the assignment.


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