Intellectual PropertyTrademarks

What Are the Examples of Trademark Assignment?

Like any other property or asset, the trademark owner has the right to sell, license, or transfer the trademark. The trademark assignment agreement or trademark licensing can be used to transfer a trademark.

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What Is a Trademark Assignment?

Trademark assignment is the process by which ownership of a trademark is transferred from one party to another. Assignment occurs when ownership rights to a trademark or brand are transferred from one owner or party to another. This can be done with or without the company’s goodwill.

Assignment and Transmission have been defined under Section 2(1) (b) and 2(1)(zc) of the Trade Marks Act, 1999 respectively. Section 2(1) (b) defines “assignment” as an assignment in writing by the act of the parties concerned. Under Section 2(1)(zc) “transmission” means the transmission by operation of law, and any other mode of transfer, not being assignment.

The provisions concerning the assignment and transmission of trademarks are contained in Sections 37 to 45 of the Trademarks Act,1999 read with Rules 68 to 79 of the trademark.

A trademark assignment is a written document that helps in the transfer of a well-known word, phrase, symbol, or design from one owner to another. “The assignor” refers to the trademark’s original owner, whereas “the Assignee” refers to the subsequent owner.

Types of Trademark Assignment

The following are the different types of trademark assignments:

Complete Assignment

All trademark rights, including the right to receive royalties, to further transfer, and so on, are transferred to another person by the trademark owner.

For instance, X is the owner of the ABC brand. Through an agreement, X totally assigns his trademark ‘ABC’ to Y. After that, X will no longer have any rights to the ABC brand.

Partial Assignment

In the case of a partial assignment, the trademark owner transfers the trademark to another person only for certain services or items. The transfer of trademark ownership is limited to certain services or products.

For instance, X is the owner of the ABC brand of sauces and dairy goods. X assigns just the rights to the brand ‘ABC’ in relation to dairy goods to Y while keeping the rights to the brand ‘ABC’ in relation to sauces.

Assignment With the Goodwill of Business

The owner of a trademark transfers the rights, entitlements, and values associated with it to another person. When a trademark is assigned with goodwill, the assignee is free to use it for any class of products or services, including those that the assignor was previously using.

For instance, X is the owner of the ‘Ferry’ brand of hair products. With goodwill, X assigns the brand ‘Ferry’ to Y. Y will be allowed to use the ‘Ferry’ brand on food and other things they create.

Assignment Without the Goodwill of Business 

The trademark owner transfers rights and entitlements in a trademark to the assignee for products or services that are no longer in use. In the case of an assignment without goodwill, the assignor limits the transfer of trademark rights. The assignor specifies that the assignee is not permitted to use the assignor’s trademark in connection with the goods or services currently in use by the assignor.

For example, X is the owner of the ‘Ferry’ brand, which he uses to manufacture and sell bags. Without goodwill, X assigns the brand ‘Ferry’ to Y. Y will be allowed to utilize the ‘Ferry’ brand for anything other than bags.

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Examples of Trademark Assignment

Trademarks, like any other asset, can be transferred from one owner to another. Such transfers can occur as a result of an assignment, merger, or amalgamation between two entities.

For example, when entity A assigns, transfers, or transmits the rights to his or her trademarks to entity B, this is known as assignment.

In case, entity A merges with entity B, and there is a transmission of trademarks rights from A to B, it would also constitute an assignment.

Despite the fact that an assignment is an agreement between two or more parties, there are several circumstances in which the assignment is restricted.

With respect to the same goods or services, the assignment grants exclusive rights to multiple people.

For example, if you assign a trademark to X for providing healthcare services and also to Y for providing healthcare services and manufacturing items, such an assignment would be prohibited since it creates exclusive rights for more than one individual.

The assignment is not permissible if the allocated markings are used simultaneously by different individuals in various regions of the country, as this would deceive or cause confusion.

Prerequisites for Trademark Assignment

  • The assignment of a trademark should be in writing
  • The assignment should be between two parties who can be identified, namely the assignor (the trademark owner) and the assignee (the buyer of the trademark)
  • The assignor must agree to the assignment and have the purpose to do so
  • The assignment should be for a proper and sufficient consideration (amount).

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