As per applicable laws in India, trademarks are considered as intangible assets and hence, the proprietors/owners of trademarks can assign and transfer rights in the same similarly to how they would transfer rights in physical properties (existing in tangible form). The legal process for assigning rights in any trademark (whether registered or unregistered) involves execution of an assignment deed between the parties.
The act of assignment denotes a transfer of legitimate rights, interests, titles and benefits from one person to another. The assignment of a trademark means to transfer the owner’s exclusive right in a trademark to another person/entity. In the case of such an assignment, the transferring party is referred to as assignor, and the receiving party is referred to as the assignee.
What are the benefits of Trademark Assignment in India?
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Assignor: Trademark assignment enables the trademark owner/assignor to monetize their brand's worth (such as by selling their trademark in exchange for consideration)
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Assignee: Trademark assignment enables the assignee to gain access and/or ownership to an already established and well-known brand/trademark by virtue of such assignment.
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Both parties: Trademark assignment can help both the assignor and the assignee expand their businesses, depending on whether the trademark assignment is made with or without goodwill
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Legal implications: A trademark assignment agreement clearly outlines and sets out the statutory rights and obligations of both the assignor and the assignee.
What are the different types of trademark assignments In India?
The different kinds of trademark assignments are as follows:
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Complete Assignment: The trademark owner transfers all ownership rights concerning the mark to another party, including the right to modify, rent, lease, loan, sell, assign, distribute, license, sublicense from and in connection with the Trademarks.
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Partial Assignment: The trademark proprietor assigns the trademark to another person with respect to a specific geographical area and/or for only specific services or goods. The transfer of ownership in such trademark assignment is restricted to specific services or products.
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Assignment with Goodwill of Business:
The owner of the trademark transfers the trademark to another person, along with the goodwill associated with the trademark and business. This essentially indicates that the assignee will be the exclusive proprietor of the mark and can use the trademark for any goods or services, including the goods or services that the assignor has been using the trademark for in the course of trade.
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Assignment without the Goodwill of Business
The owner of the trademark transfers the trademark to another person/entity but does not transfer the goodwill associated with the trademark. This essentially indicates that the assignee cannot use the trademark for any goods or services that are similar to the goods or services that the assignor has originally been using the trademark for in the course of business
