Since we all are aware that Trade mark is not limited to registration but it is valuable assets like any other, therefore it can also be sell, transfer or license. In India, Trade mark Act, 1999 deals with the aspects such as assignment (permanent) or licensing (temporary) of Trade Mark.
Assignment of registered trade mark is a process under which ownership of the mark is transferred with or without goodwill of the business either in respect of all the goods and services or part thereof.
PROCEDURES OF ASSIGNMENT:
- Assignment of unregistered trade mark:
Section 39 stipulates that an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.
- Assignment of registered trade mark:
Section 38 stipulates that trade Marks can be either assigned in full or transmitted in part, with or without the goodwill of the business. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. (Rule 68 of the Trademarks rule, 2002)
Further, section 40 of the Trade Mark Act 1999 also puts certain restrictions on the assignment of a registered trade mark wherein there exist possibilities of causing confusion in the mind of public. Such restrictions are:
- Restriction on assignment that results in the creation of exclusive rights in more than one person with respect to the same goods or services, or for same description of goods or services or such goods or services as associated with each other.
- Restriction on assignment that results in different people using the trademark in different parts of the country simultaneously.
However, an assignment or transmission shall not be deemed to be invalid under this sub-section if the exclusive rights subsisting in the persons concerned are, such as not to be exercisable by two or more of those persons
- In relation to goods to be sold, or otherwise traded in, within India [otherwise than for export there from, or in relation to good to be exported to the same market outside India,
- In relation to services for use at any place in India or any place outside India in relation to services available for acceptance in India.