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Trademark is a kind of Intellectual property which protects the name, symbol, logo, nouns etc. It is considered as a physical property like any other property the owner of the and has the right to sell, transfer his property and the same he can do with his Intellectual property. Every brand or Trademark owner has full right to sell or transfer their Trademark by way of licensing or Trademark assignment. Trademark Act, 1999 deals with licensing of Trademark and Trademark assignment.
Trademark assignment is the part of Transfer of ownership of Trademark from one person to another person. The process of change on ownership of the registered mark is known as Trademark assignment. Whereas in Trademark licensing, there is no change in the owner but a few restricted rights to use the Trademark are given to a third party.
Further assignment of Trademark usually takes place through an agreement between the parties which is known as Trademark assignment agreement. Assignment agreement is legally valid when the intention of the assignor is in good faith.
Assignment with Goodwill
Assignment without Goodwill
The concept of Trademark licensing allows usage of a trademark by another person without the transfer of the ownership associated with the mark. The Trademark act doesn't talk about the term “License” whereas the term used in the Act is “Registered user”.
Trademark assignment is beneficial for both the parties. While the licensor relishes the right to the mark by getting royalties, the licensee becomes competent to expand its market operations by using the brand and developing its name.
Following are the benefits of Trademark assignment-
Assignment of unregistered Trademark
Assignment of a Registered Mark
Following are the procedures for Trademark assignment agreement-
Name of the assignee is entered in the register of trademark. After entry of the name in trademark register, the assignee is eligible to use the trademark as per the terms of the agreement.
Therefore, Trademark assignment of a brand can open many opportunities with proper planning. It allows third parties to have access over the right of the real owner of the brand. With the assignment, the brand remains alive and both assignor and assignee avail various benefits. One of the famous examples of trademark assignment is Havmor ice cream who transfers its right partially to Lotte confectionery worth Rs. 1020 crores.
We, at BIAT legal LLP provide end to end solutions for Trademark Assignment. Our services include:
BIAt legal LLP is a leading legal consultancy firm providing the comprehensive services relating to Trademark Assignment.
Contact us now if you seek to assign your trademark to someone else.