According to Trademarks Act, 1999 “trademark”, is a mark which can be represented in a graphical form and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and the combination of colours.
A trademark will not obtain protection unless it is affixed to a good or service offered in a commerce. You can claim trademark over a symbol, logo and even on a slogan or phrase.
Basically, trademarks are treated as an asset. Therefore it is transferable from one person to another. An Assignment of a trademark is a permanent process, whereas licensing is treated as a temporary process. An assignor is a person who transfers the ownership rights and the assignee is the person who acquires the ownership.
Trademarks Act, 1999 deals with Assignment and transmission.
The register of trademarks shall be kept at the head office of the TRADEMARK REGISTRY where all the registered trademarks will be entered with the following details such as:
iii) Description of proprietor/ proprietors
iv) Notification of assignment
v) Descriptions of the registered users and
vi) Limitations as prescribed
Symbol: In India, all trademarks are recognized by the symbol ™ and ® denotes registered trademark. The main reason for prohibiting similar trademarks is that they may cause confusion for the consumer.
According to Trademarks act, 1999 a trademark will not be assignable to a person or a firm, if the mark is closely resembling or it is of identical nature or if the goods or services offered are similar or the description is similar between them or if it has some relevant structures.
Ways to assign the trademark
If we take a look at the assignment of a trademark, they are of two types:
- Complete assignment of trademark:As the name itself says, the owner transfers all his rights and interests he has over the trademark. The assignee can claim entire ownership on the mark entitled to him.
- Partial assignment of trademark: In a partial assignment, the transfer is restricted to a specific product or service.
- Assignment without goodwill: A trademark is transferable even without goodwill. Both assignor and assignee can use the trademark but without goodwill, that is, the assignee can use the mark other than the product which is used by the assignor.
- Assignment of an unregistered mark: According to the Trademarks Act, 1999 an unregistered trademark may be assigned with or without the goodwill of the business concerned.
- Assignment of a registered mark: According to the Trademarks Act, 1999 an application is to be made, in which you have to mention your name, place of residence, the date of acquisition of proprietorship and details of the instrument of assignment. At last, an acknowledgment that all the above-said facts and matters mentioned are true to the best of my knowledge.
Deed of assignment:
- The assignment deed should be carefully drafted,
- The deed will mention the names of both assignor and assignee,
- The most important point is, the mark which the assignor wants to assign must be mentioned in the deed of assignment,
- The assignor has to give a confirmation regarding trademark that there is no dispute pending in the court of law,
- Both assignor and assignee will confirm that there is a transmittal of funds outside India in connection with this assignment,
- At last, the assignee will take the necessary steps to affect the registration of the deed by signing,
- The date on which the deed has been entered into must be mentioned, and
- Once the trademark is assigned, the change in the trademark owner has to be filed with the trademark registry.