WHAT IS A TRADEMARK?
A trademark is a type of intellectual property. A trademark also commonly known as a trademark, trade-mark or a mark. A trademark consists of a recognizable sign, design, or expression which identifies products or services of a particular company and helps in distinguishing the products from those of others. The symbols ® ‘the registered trademark symbol’ and ™ ‘the trademark symbol’ are generally used to indicate trademarks; the former is only for use by the owner of a trademark which is registered.
The trademark can be owned by
- an individual,
- business organization,
- or any legal entity
When a trademark is registered, it confers an exclusive right to the owner to use the registered trademark. Thus it can be said that the trademark can be used by his owner exclusively, or it can be used by a person licensed for use in return of valid consideration.
TRADEMARK ASSIGNMENT
Trademark being an intellectual property is like any other asset in the company, which means it can be transferred by the owner to any other person for consideration. The transfer of ownership of the trademark is known as a trademark assignment.
A trademark assignment is a transfer of an owner’s interest, title and rights in a registered trademark or service mark. In the trademark assignment, the transferring party is known as the ‘assignor’ and the party to which it is transferred is known as the ‘assignee’.
The trademark assignment is said to happen when the owner of such mark, is transferred from the assignor to the assignee whether along with or without the goodwill of the business.
TYPES OF TRADEMARK ASSIGNMENT
There are four ways through which a trademark can be assigned
- Complete assignment
In this type of assignment, all the rights are completely transferred by the owner to the assignee.
The assignee has got all the rights including rights such right to further transfer and right to earn royalties.
- Partial assignment
In this type, the assignment of the trademark is made to the assignee, but with respect to only some of the goods/ services, the transfer of ownership of the trademark is restricted to specific goods or services only. The rights are not transferred completely.
- Assignment with goodwill
In this type of assignment, there is also a transfer of goodwill of the product with the trademark. In this, the valuation of goodwill is calculated differently in the agreement.
- Assignment without goodwill
In this type of assignment, goodwill of the product is not transferred along with the assignment of the trademark; in this, the owner of the brand restricts the rights of the assignee and does not allow him to use such trademark of the brand for the products being used by the assignor. Such an assignment is also referred to as a gross assignment.
WHEN CAN A TRADEMARK BE ASSIGNED?
A trademark can be assigned in the following situations
- The Death of the Trademark Owner
Whenever the owner of the trademark i.e. the assignor dies, its ownership is passed on to the successors of the previous owners in a will or intestate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.
- Sale of Business
Intellectual properties are assets for the company, just like all properties, even the trademark can be sold with the company. Provided it is registered under the company’s name. If a party acquires trademark rights of a company by acquiring a business with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.
- Change of the owner of businesses
When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.
- Change in Form of Business
Whenever a business plan on changing its form of business or its business structure an assignment is a boon for those businesses.
ESSENTIALS OF ASSIGNING A TRADEMARK
For completion of the assignment of trademark, there are a few basic requirements that need to be fulfilled by the parties.
- The parties must identify the type of assignment they wish to have, either with or without goodwill.
- The trademark assignment agreement must be in writing;
- Proper Identification of the parties to the assignment, that is, the assignor and the assignee;
- Details and Identification of the Mark(s) to be assigned;
- Identify the effective date of the assignment;
- Be duly executed, i.e. it must be signed by all the parties to the assignment,
- Form TM-P should be duly filled and submitted to the registrar along with the trademark assignment agreement between the parties.
- The trademark should be transferred for a valid consideration;
ADVANTAGES OF TRADEMARK ASSIGNMENT
There are a couple of reasons why drafting a proper and good trademark assignment agreement is necessary for the parties.
A trademark assignment is beneficial as:-
- It benefits the assignee as he gains the advantage of entering the market with an already registered and known trademark, this will help him in maintaining the customer base for his product without having to work on brand building.
- It acts as evidence as there exists an agreement between the assignor and the assignee for the transfer of the trademark in case a dispute arises between the parties.
- The assignor gets to monetize the value of his trademark and enjoy the fruits of the time and investments done for creating his brand in the market.
- It helps in business expansion and in keeping the brand alive.
- It helps the trademark owner to preserve the brand and the goodwill of the product.
CONCLUSION
The trademark assignment is the most utilized and the most important tool for the transfer of the intellectual property rights from one person to another. It forms a legally binding obligation over the parties and helps the parties in case a dispute arises. It helps the businesses for transferring/sale of their assets.
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