As per the provisions of the Trademarks Act, 1999, an unregistered trademark can be transferred with or without goodwill. Assignment deals with the transferring of the rights vested with the trademark of the proprietor, who was using the unregistered trademark over the period of a few years, to a third party.
Trademarks are typically used as an indication that includes, any insignia, words, or a combination of words, or symbols that essentially distinguishes the goods or services of the given brand against the others in the market. A trademark’s role is to identify and specify that particular good or service belongs to the respective brand. Trademark is one of the branches of Intellectual Property and can be either registered or unregistered.
Vakilsearch‘s free trademark search tool helps you to check trademark availability before you begin the registration process.
Unregistered Trademarks
The major difference between a registered and unregistered trademark is that the latter is not registered under the Trademarks Act, 1999. However, this does not make an unregistered trademark go unprotected. It would only imply that those marks are not protected under the Act, but can claim protection under common law. Therefore, in case of Trademark Infringement, no action can be claimed under the Trademarks Act, 1999 but the aggrieved person can claim protection under the law of Torts for passing off. However, under the said circumstances, the aggrieved party has to prove that the unregistered trademark had been in usage for a considerable period of time, and has built a reputation or goodwill in relation to the goods or services the unregistered trademark is attached to.
Assignment of Trademarks
Trademarks, like any other intellectual property, can be assigned to a third party. The assignment should be made in writing and should facilitate the transfer of the word, phrase, designs, and symbol of the trademark from its registered proprietor to another party. The registered proprietor transferring the trademark is called the ‘assignor’ and the party that receives the trademark rights is the ‘assignee’. In an assignment, the proprietor’s right, title, and interest over the said trademark are transferred to the assignee. An assignment, strictly speaking, paves way for the transfer of ownership with or without the goodwill of the business. In the case of registered trademarks, the assignment has to be notified to the Registrar of Trademarks.
Different ways of Assigning Trademarks
The Trademark Assignment Deed can be done in the following ways:
Complete Assignment of Trademarks
As the name suggests, all the rights vested with the trademark like the royalties, rights to transfer the trademark again to another party, etc. are transmitted from the proprietor to the assignee.
Partial Assignment of Trademarks
Here the assignment is constrained by the assignor or the registered trademark proprietor only to a specific set of products or services. For instance, say a trademark named ‘OXA’ has entered into an assignment agreement. The agreement can specify that the assignee can use the said trademark, ‘OXA’ only for textile products, and it cannot be used for any other product or service.
Transfer with Goodwill:
When the transfer is done with the goodwill, the rights and value vested with a trademark are assigned to the assignee and the mark can be used by the assignee for marketing the same product or service the assignor is dealing with.
For example, if the proprietor X, of the trademark ‘OXA’, which is attached to the manufacturing and selling of stoves, has done an assignment of the trademark with goodwill to another person Y, Y can use the trademark ‘OXA’ for the manufacturing and selling of stoves.
Transfer without goodwill.
In this case, the assignor restricts the assignee from entering the market where the assignor operates. This implies that the assignor and the assignee are free to adopt the same trademark but not for identical products or services. Here, if the assignor deals with the trademark ‘OXA’ for the manufacturing and selling of stoves, a transfer without goodwill would mean that the assignee can use the trademark ‘OXA’ on any other product or service other than that of stoves.
Regardless of whether a trademark is registered or unregistered, it can be assigned with or without goodwill. Section 39 of the Trademarks Act, 1999 speaks specifically about unregistered trademarks. It states that even if a trademark is not registered, it could still be assigned or transmitted with or without the goodwill of the concerned business. In order to make the assignment of an unregistered trademark, a request has to be raised using the form TM-16.
Procedure for Assignment of Trademark
- Making an Application:
The first step in the process of trademark assignment is to make an application for the assignment of the trademark. This can be done either by the assignor or the assignee or both of them
- Furnishing of Documents:
The applicant has to present copies of all the mandatory documents duly attested along with the stipulated forms as stated by the Trademarks Act, 1999. The form TM-P shall be attached with the documents
- Filing of Application with the Registrar:
After the assignment is accomplished, the Registrar: https://ipindia.gov.in/ of the respective jurisdiction has to be notified within 3 months from the date of making the assignment. When the assignment of the registered or unregistered trademark is accomplished, a direction from the Registrar pertaining to the same is compulsory before the expiry of 3 months
- Publication of Advertisement:
The applicant has to publish an advertisement as directed by the Registrar and a copy of the same along with the Registrar’s direction is required to be attached.
- Transfer of the Ownership and the Rights of Unregistered Trademark:
The Registrar runs a check over the forms and documents thus submitted, and if there are no discrepancies, the ownership of the trademark is transferred from the assignor to the assignee. If you have any queries reach out to our experts from Vakilsearch.
Conclusion
While unregistered trademarks lack the formal protections afforded to registered marks, they can still be assigned under certain circumstances. Assigning an unregistered trademark involves transferring the rights to use the mark from one party to another. However, it’s important to note that without registration, the assignment may carry inherent risks, such as limited legal protection and potential disputes over ownership. Therefore, parties involved in assigning unregistered trademarks should exercise caution and consider seeking legal advice to mitigate risks and ensure a smooth transfer process.
FAQs
Can an unregistered trademark be licensed?
Yes, even without registration, you can license an unregistered trademark for use by others.
Can I use TM if not registered?
Yes, using TM signifies that you claim rights to the mark, even if it's not registered.
What is the position of an unregistered trademark in India?
Unregistered trademarks are protected under common law in India, offering some level of legal recourse against passing off.
What is the difference between TM and registered trademark?
TM indicates a claim to a trademark, while ® signifies a registered trademark.
What is the difference between registered and not registered TM?
A registered trademark has legal protection and exclusive rights, while an unregistered trademark relies on common law for protection.
What are the disadvantages of unregistered trademarks?
Unregistered trademarks have limited legal protection and may face challenges in enforcement compared to registered marks.
What happens if a trademark is objected to?
If a trademark application is objected to, you'll need to respond to the objection with evidence and arguments to overcome it.
What is the validity of a registered trademark?
A registered trademark is valid for 10 years in India and can be renewed indefinitely.
What is the fee for trademark objection?
The fee for responding to a trademark objection varies depending on the circumstances and legal representation required.
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