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Essentials of a Trademark Assignment in India

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The assignment of a brand name occurs when the ownership of a said mark is transferred from one individual to another, with or without the goodwill of the business. The Trademark Assignment takes place through the completion of the agreement between the said parties, which is commonly called a Trademark Assignment Agreement. The said agreement shall be valid only when it shows the intention of the assignor to transfer complete/partial ownership of the given mark. An assignment when done partially is known as licensing.

Assignment of a Trademark

Two parties- There should always have two parties i.e. assignor and assignee.
Must be in writing- The agreement should be in writing.
Identify mark to be registered- The agreement should have the mark which is being assigned.
Consideration- Assignment is made in exchange for a valid consideration; such amount be specified in the agreement.
Effective Date- The assignment agreement must have a proper date from which the agreement becomes effective.
Goodwill- It is necessary to mention agreement with or without goodwill.
Executed- Signed by all the parties of the assignment.

Benefits of Trademark Assignment

Helps in keeping brand alive and growth of the business;
Analysis of the value of the brand and secures time & investment done for creation of brand;
Secures the rights of both assignor and assignee;
Acts as evidence in case of the dispute arise;
Helps the proprietor of the brand name to preserve the brand and goodwill of the business;

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When can a Trademark be assigned?

Death of Trademark proprietor- If the brand name is valid and has not been abandoned by the previous owner, then after the death of the assignor (owner), its ownership is passed to successors of previous owners in a will.
Sale of Business- If an individual acquires the brand name rights of a company by acquiring a business with respect to the sale of assets of the company; the intellectual properties will also be transferred.
Change of Owner of Business- For merger/amalgamation of the company, a notification is sent to the registry. All the said intellectual property of the acquiring the company is transferred to the new proprietor through a trademark assignment agreement between them.
Change in Form of Business- When a business is changing its type of business.

Kinds of Trademark Assignment

1. Complete Assignment;
2. Partial Assignment;
3. Assignment with Goodwill;
4. The assignment without goodwill;

Complete Assignment- In this, the Brand Name Owner/ Brand transfers all its rights to another entity which includes the right of further transfer, earn royalties, etc. The assignee enjoys all the rights assigned to him by the original owner.

Partial Assignment- In this, transfer of ownership is limited/ restricted to specific goods or services as parties discussed in the assignment agreement. Both Complete and partial agreement can be made with goodwill or without goodwill.
Assignment with Goodwill- In this, value and right, both are associated with a brand name are transferred to the third entity with goodwill.
The assignment without Goodwill- In this, where the proprietor of the brand restricts the right of the buyer. The buyer cannot use such a brand for items being used by the original owner.

Trademark Assignment in India – Section 38 of the Act provides that it can be assigned full or in part with or without the goodwill o the business.

Assignment of Unregistered Trademarks- Section 39 of the Act provides that it can be assigned with or without the goodwill of the business.

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