The provision with regard to Trademark Assignment is contained in The Indian Trademarks Act, 1999. The Act contains legal provisions about legal rights to the owner of the Trademark. The Act also allows the transfer of trademark from one person to another. The Act also provides for the rights given to the owner of the trademark who is assigning it to another. This is the only reason why big brands always caution about their rights while assigning their trademark. The value can be quantified in terms of the popularity being earned by the trademark owner over time.
Well, a trademark is nothing but the transfer of rights of the trademark from one person to another. The trademark can be registered or otherwise. In legal terms, one can say that it is a complete or partial transfer of the owner’s right over any product or services being sold or rendered by him. Now it is important to understand the meaning of complete and partial assignment of trademark
The complete assignment of a trademark means the transfer of all rights as are associated with the trademark. Here the owner of the trademark assigns all right to the other person to whom the transfer is made the rights include the right of selling of the product, rendering of service, the right to further assign the subjected trademark.
Partial Assignment refers to the process of assignment of rights in the trademark to other person however, in some restricted manner. Not all time there is a requirement of assigning the trademark with full rights, there may be a case where someone wants to sell the product only under your shadow and here a partial assignment can be made. In the partial assignment of trademark right with regard to goods or services are rest in the hand of the original owner however, some right from the bundle of rights are assigned to another person.
In order to record the transaction and in order to make the assignment valid it is always advisable to get it in writing like in most of the agreement there is an assignment clause, which provides for the rights vested to the owner of the trademark. The owner is also known as the Assignor and the person to whom the transfer is made is known as Assignee.
STEPS TO BE TAKEN FOR ASSIGNMENT OF TRADEMARK
- The first step of assignment of trademark is to file an application for assignment of trademark. The Application for assignment of trademark can be made by the assignor or by the assignee. Further, it can be made by the both assignor and assignee jointly. The application is to be made in form as may be prescribed under the Act.
- The application for assignment of trademark shall be made in the prescribed form to the registrar within a period of 6 months of acquisition of trademark.
- The registrar shall after providing some guidance as may be required advertise the same in the official gazette and when all necessary proceeding is done to the satisfaction of the Registrar, it shall officially assigns all the rights of the subjected trademark, to the new owner ie., Assignee. The Registrar shall register the name of Assignee in his register. Thereafter, Assignee got full rights in the Trademark for future use.
- The application in prescribed Form
- Affidavit in prescribed format
To conclude above, one can say that the rights are protected under the Trademark Act and any person who wants to assign the rights in trademark can do so whether complete or partial by filing an application of assignment of trademark to registrar and who shall after being satisfied with the submission shall mark details of new proprietor in his registrar.
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