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What is Assignment and Transmission of Trademark?

Trademarks are valuable business assets that can be transferred from one entity to another through assignment or transmission. The Trade Marks Act, 1999, governs the process of Assignment and Transmission of Trademark in India, ensuring that legal rights associated with a trademark are properly transferred and protected.

What is Assignment and Transmission of Trademark?

The transfer of a trademark from one entity to another can occur in two ways:

• Assignment: The owner of a trademark (assignor) transfers ownership rights to another party (assignee), either partially or entirely.

• Transmission: This occurs due to operation of law, such as inheritance or a company merger, where the rights of a trademark automatically pass to another entity.

Types of Trademark Assignment

1. Complete Assignment with Goodwill: The assignor transfers all rights, including goodwill associated with the brand, allowing the assignee to use the trademark for existing and future products/services.

2. Complete Assignment without Goodwill (Gross Assignment): The assignor transfers the trademark but restricts the assignee from using it for the same type of goods/services to prevent market confusion.

3. Partial Assignment: The assignor transfers the trademark rights only for specific products/services, retaining rights for other categories.

4. Assignment with Territorial Restrictions: The trademark is assigned with restrictions on its use in specific geographic regions.

Legal Framework for Assignment of Trademarks in India

As per Section 37 to 45 of the Trade Marks Act, 1999, trademark assignment must be documented through a legally binding agreement. To be legally recognized, the assignment should be recorded with the Trademark Registry by filing an application.

Process of Trademark Assignment in India

1. Drafting an Assignment Agreement: Both parties must prepare a legal agreement outlining the terms and conditions of the assignment.

2. Filing an Application: The assignee must submit Form TM-P to the Indian Trademark Registry with details of the assignment.

3. Publication in Trademark Journal: If necessary, the assignment details are published to invite third-party objections.

4. Approval from Trademark Registrar: Upon review, the Registrar updates the trademark ownership details in official records.

Key Considerations for Trademark Assignment

• Consent Requirement: If a registered trademark is assigned without goodwill, it requires approval from the Trademark Registrar.

• Tax Implications: Trademark assignment is subject to Goods and Services Tax (GST).

• International Assignments: Assignments involving foreign entities must comply with international trademark treaties.

Benefits of Trademark Assignment

• Monetization of Trademark: Trademark owners can generate revenue by selling or licensing their trademarks.

• Brand Expansion: Businesses can acquire established trademarks to enter new markets.

• Legal Protection: Proper assignment ensures that legal rights are transferred and enforceable.

Conclusion

The Assignment and Transmission of Trademarks allow businesses to transfer trademark ownership effectively, ensuring legal protection and brand continuity. To avoid disputes, it is crucial to follow legal procedures and register the assignment with the Trademark Registry. Seeking professional legal assistance can streamline the process and ensure compliance with Indian trademark laws.