What is Trademark?
A trademark is a word, phrase, symbol, or design used to identify and distinguish the products and services of one party from those of another. A service mark is the same as a trademark, except that it identifies and distinguishes the services of one party from those of others.
A trademark is a valuable business asset and should be protected. The owner of a valid and enforceable trademark may prevent others from using the mark without their permission.
Assignment of Trademarks
A trademark assignment is a transfer of ownership of physical property, such as land, from a seller to a buyer. A trademark includes both trademark goodwill and a trademark reputation. The Trade Marks Act of 1999 in India governs the protection of trademark assignment and licensing. The seller assigns all rights to the trademark and trade license registration to the buyer. It also means that if the seller doesn't have any rights to a trademark, the buyer can also get those rights from the seller.
In any of the following ways, a trademark may be assigned or transferred to another entity:
1. Parties to an Assignment: An assignment of a trademark can be made only by the registered owner of the mark, or by a person authorized to do so by the registered owner.
2. The Assignor Rights and Liabilities: The assignor of a trademark transfers all rights in the mark to the assignee, and is relieved of all liabilities associated with the mark.
3. The Assigner Rights and Liabilities: The assignee of a trademark becomes the new registered owner of the mark, and is responsible for all future use of the mark. The assignee may also be liable for any past infringement of the mark.
4. The Form of an Assignment: An assignment of a trademark must be in writing, and must include the following information:
· The name and address of the assignor
· The name and address of the assignee
· The trademark to be assigned
· The date of the assignment
5. The Consideration: The consideration for an assignment of a trademark may be in the form of money, goods, services or any other valuable consideration.
6. Goodwill of Business Assignments: The goodwill of a business generally refers to the intangible value of a company or business. This value may be based on factors such as the company’s name, reputation, customer base, and employee base. When a company is sold or merged, the goodwill of the business is one of the most important assets to be transferred.
7. Recording an Assignment: An assignment of a trademark must be recorded with the Trademark Office in order to be effective.
Assignment of Trademarks License
The assignment of a trademark license in India is a transfer of the exclusive right to use a trademark from one party to another. The assignor (the party transferring the license) is the owner of the trademark and the assignee (the party receiving the license) is the new trademark licensee.
The assignment of a trademark license must be in writing and must include the following information:
1) The trademark owner executes a trademark license agreement transferring the trademark to the third party.
2) The trademark license agreement must be registered with the Trademark Office in order to be valid.
3) The third party must use the trademark in accordance with the terms and conditions of the trademark license agreement.
The assignment of a trademark license is a transfer of rights, and as such, it is subject to Indian stamp duty.
The process of assignment of the trademark in India
The process of assignment of the trademark registration in India is quite very easy and, simple. The trademark owner can assign the trademark to a third party by executing an assignment deed.
1) The TM owner executes an assignment deed transferring the trademark to the third party.
2) The assignment deed must be registered with the TM Office in order to be valid.
3) The third party must use the TM in accordance with the terms and conditions of the assignment deed.
Documents Required for Assignment of TM in India
The following documents must be submitted to the registrar of trademark in India:
· Trademark assignment agreement
· Copy of the registered trademark
· Proof of payment of the prescribed fee
· Copy of the sale deed or any other document evidencing the assignment
Conclusion
The use of trademark registration and trademark licensing is an important tool for businesses to protect their brands and to distinguish their products from those of their competitors. There are a number of ways to use trademarks, including through registration, use in commerce, and licensing.