A trademark is a type of intellectual property. A trademark is a system commonly known as a trademark, it can also be said trade-mark or a mark. A trademark consists of a unique and recognizable sign, design, or expression that helps in the identification of the products or services of a particular company and it, in turn, helps in the process of distinguishing several products from those of others. The symbols (®) are known as ‘the registered trademark symbol’ and the symbol (™) is mostly known as ‘the trademark symbol’. These symbols are generally used to indicate trademarks; the former is only for use by the owner of a trademark that is registered.

The trademark can be owned by

• individual registration for the trademark
• business organization registration for a trademark
• or any legal entity trademark registration

When a trademark is registered, it defines an exclusive right to the owner to utilize the registered trademark. Thus it can be said that the trademark can be used by its owner exclusively, or it can be used by a person licensed for use in return for valid consideration.

TRADEMARK ASSIGNMENT

Trademark being an intellectual and effectual property is like any other asset in the company, which means it can be transferred by the owner to any of the other people for consideration. The transfer of ownership of the trademark is formally known as a trademark assignment.

A trademark assignment is a kind of transfer of an owner’s interest, title, and rights in a registered trademark or service mark. In the trademark assignment, the transferring party is known as the ‘assignor’ and the party to which it is transferred is known as the ‘assignee’.

The trademark assignment is said to take place when the owner of such a mark, is transferred from the assignor to the assignee whether along with or without the goodwill of the business.

EXISTENCE OF VARIOUS TYPES OF TRADEMARK ASSIGNMENT

There are four ways through which a trademark can be assigned for an individual purpose or a company or firm

• Complete assignment of the trademark registration

In this type of unique type assignment, all the rights are completely transferred by the owner to the assignee.

The assignee has got all the rights including rights such right to further transfer and the right to earn royalties.

• Partial assignment regarding registration

In this specific type, the assignment of the trademark is made to the assignee, but concerning only some of the goods/ services, the transfer of ownership of the trademark is restricted to specific goods or services only. The rights of Partial assignment of the trademark assignment regarding registrations are not transferred completely.

• Assignment with the goodwill of the trademark registration

In this type of assignment, there is also a transfer of goodwill of the product with the trademark. In this, the valuation of goodwill is calculated differently in the agreement.

• The assignment without goodwill regarding trademark registration

In this type of assignment, goodwill of the product and the services of the authority is not transferred along with the assignment of the trademark this can even be said as trademark assignment; in this, the owner of the brand restricts the rights of the assignee and does not allow him to use such trademark assignments of the brand for the products being used by the assignor or the authority. Such an assignment is also referred to as a gross assignment.

WHEN CAN A TRADEMARK BE ASSIGNED?

A trademark can be assigned in the following situations

• The Death of the Trademark Owner

Whenever the owner of the trademark i.e. the assignor dies, its ownership is passed on to the successors of the previous owners in a will or intestate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

• Sale of Business

Intellectual properties are assets for the company or any firm, just like all properties, even the trademark can be sold with the company. Provided it is registered under the company’s name. If a party acquires trademark rights of a company by acquiring a business concerning the sale of assets of the company, the intellectual properties are also said to be transferred. This can even take place.

• Change of the owner of businesses

When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company is transferred to the new owner through the trademark assignment agreement between the parties.

• Change in Form of Business

Whenever a business plans on changing its form of business or its business structure an assignment is a boon for those businesses.

ADVANTAGES OF TRADEMARK ASSIGNMENT

There are a couple of reasons why drafting a proper and good trademark assignment agreement is necessary for the parties.

A trademark assignment is beneficial as:-

The advantages of Trademark assignment are mentioned below:

• It benefits the assignee as he gains the advantage of entering the market with an already registered and known trademark, this will help him in maintaining the customer base for his product without having to work on brand building.
• It acts as evidence as there exists an agreement between the assignor and the assignee for the transfer of the trademark in case a dispute arises between the parties.
• The assignor gets to monetize the value of his trademark and enjoy the fruits of the time and investments done for creating his brand in the market.
• It helps in business expansion and in keeping the brand alive.
• It helps the trademark owner for the preservation of the brand and the goodwill of the product.

CONCLUSION

The trademark assignment is the most utilized and the most important tool for the transfer of intellectual property rights from one person to another. It forms a legally binding obligation over the parties and helps the parties in case a dispute arises. It helps the businesses for transferring/sale of their assets.