According to the Trade Mark Act 1999
“Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.” Which in layperson language suggests that any sign-on product or services that create it totally different from the opposite or simple to differentiate one from the opposite may be a Trademark.
Assignment and Transmission of Trademark
Assignment and Transmission of Trademark is a process in which ownership of the trademark is passed from one person to another with full or partial rights depending on the terms and conditions of the owner of the trademark. Registered and Unregistered Trademarks are assigned and transmitted from one person to another with or without the goodwill of the business concerned.
Difference between the Assignment and Transmission of the Trademark
Generally, the term Assignment and Transmission are used interchangeably but Sec 2 of the Trademark Act clearly distinguishes between the Assignment and Transmission. In case of an assignment of a trademark, there is a change in the ownership of the registered brand and in case of Transmission, the right in the trademark continues to vest with the original owner but only a few restricted rights to use the brand/mark are given to the third party.
For example, X is the owner of the trademark “œ” and decided to assign his trademark to Y. It means that X will no longer have the ownership of the trademark and after proper assignment Y will be registered owner of the trademark and will have all the rights to it.
Whereas if X decided to do the Transmission of a Trademark it will mean that X is still the original owner of the trademark but he has just given restricted rights and liabilities to Y to use the trademark.
Types of Assignment and Transmission of Trademark
Complete Assignment and Transmission
It means the transfer of all rights including rights to further transfer, rights to royalties, etc from one individual to another.
For example, A proprietor ‘X’ sells his all rights of the Trademark to Y another proprietor according to which Y have all the exclusive rights of the Trademark and he can use the trademark in any way as he deems fit, if he wants he can further transfer it, he can receive royalties for the usage of Trademark or set some guidelines for the usage of the trademark as they deem fit and there will be no need to take the approval of ‘X’.
It means the transfer of ownership specified or restricted to certain services or products.
For example: ‘X’ a proprietor have a Trademark (♛) which deals with men’s lifestyle products which include clothing to shoes assign and transfer his trademark (♛) to Z on a condition that they can use their trademark only in dealing with shoes and nothing else, the only X has the right to use the trademark on all the products. This kind of transfer is known as a partial transfer.
Assignment with goodwill
It means to transfer and assignment of the trademark with all the rights and values associated with the trademark from one person to another.
For example, X assign and transfer his trademark (♛) to Z with all the rights and values. By doing this Z has the full right to use the trademark for all men’s lifestyle products or for any other products that they manufacture in future.
The assignment without goodwill
It means the transfer of trademark by the owner in such a way it can be used for any other purpose except the original one.
For example: X proprietor with a trademark (♛) deals with men’s lifestyle products, assigns and transfers his trademark(♛) to Z on a condition that Z can use his trademark for any product that he wants except for men’s lifestyle products.
Conditions for assignment and transmission as given in section 42
Section 42 of the Trademark Act describes Conditions for Assignment and Transmission of a Trademark otherwise than in connection with the goodwill of a business. It states that assignment and transmission of the trademark otherwise than in connection with goodwill will not take effect until and unless assignee apply to the registrar concerning the directions for the advisement of the assignment and advertises it in such form and manner and within such period as the Registrar may direct but not later than 6 months of which the assignment is made or after an extended period of 3 months if registrar allows for it.
But it will not be considered as an assignment of trademark otherwise than in connection with the goodwill of the business if the trademark is assigned for some goods and services along with the goodwill of the business concerned for those goods and services.
And the assignment is done for those goods which are exported and those services which are used outside India with the assignment of goodwill
Restrictions on Assignment of Trademark
Trademark act also makes certain restrictions on the Assignment and Transmission of the Trademark where there is a possibility of creation of confusion among users or public.
- Restriction on assignment or transmission where multiple exclusive rights would be created.
- Restriction on assignment or Transmission where exclusive rights would be created in different parts of India.
Process of Assignment and Transmission of Trademark (Section 45)
- Application to the Registrar of Trademark in Form TM-P
(with the original copy of duly certified documents)
- Registrar will dispose of his decision within 3 months
a).Inform the applicant about the assignment or
b) Call to furnish proof if he has some doubts.
- If approved, the registrar will make an entry in the Register with details,
(i) the name and address of the assignee;
(ii) the date of the assignment
(iii) where the assignment is in respect of any rights in the trademark, a description of the right assignment.
(iv) the basis under which the assignment is made; and
(v) the date on which the entry is made in the register1.
If there is any dispute going on between the parties regarding the validity of an assignment or transmission, the registrar may refuse to register the assignment or transmission until the right of the parties has been determined.
Assignment and Transmission of Registered Trademark (Section 38)
Section 38 of the Trademark Act describes the Transmission of Registered Trademark according to which “Notwithstanding anything in any other law to the contrary a registered trademark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trademark is registered or of some only of those goods or services”
Assignment and Transmission of Unregistered Trademark(Section 39)
Section 39 of the Trademark Act describes the Transmission of Unregistered Trademark according to which “An unregistered trademark may be assigned or transmitted with or without the goodwill of the business concerned.”
Benefits of Assignment and Transmission of Trademark
Expansion of business
By assignment and transmission of the trademark from the owner to the assignee, the owner expands his business by using the same trademark in more than one place simultaneously. By giving the partial authority of the owner also has the power to give a trademark assignment to more than one person.
Benefits of the already established brand
Assignment and transmission of trademark help the assignee to use the already established trademark in the market to create their base. It also helps the assignee to save money and resources by not spending on marketing to create a brand.
Assignment and Transmission of trademark also act as a legal proof in case disputes of any kind arise regarding the usage of Trademark because all the legal rights and liabilities were already mentioned in a form of a legal deed.
By Assignment and Transmission of Trademark, the owner of the trademark enjoys monetary benefits received by assignment and Transmission along with the increase in the value of the brand by operating with the same Trademark in more than one place.
Structural waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]
It is stated that when disputes arise between parties for assignment and transmission of Trademark then the registrar can refuse to register the assignment and transmission until and unless the decision is taken by the competent court. In this case, the plaintiff claimed the ownership of the trademark only based on Memorandum of understanding created between them. The court in this case declined his request for an injunction on the defendant. It is also stated in the decision that the trademark cannot be claimed unsuitable merely because there is a change in the name of the registered proprietor.
Cinni foundation v. Raj Kumar Shah and sons[ 2009(41)PTC320(Del)]
It was found that the trademark CINNI was used by the owner. The deed of assignment has been created and duly signed between the parties and after a certain time, it is found that the trademark is not a registered trademark and so the defendant tries to claim the trademark in which court decided that according to the law, assignee acquire no title without registration of the assignment deed.
Assignment and Transmission of a Trademarks create ample opportunity for the owner as well as for assignee. It helps the new brand to get developed because of its usage from more than one place simultaneously. Developed brands used it as a tool to generate more revenue and business for themselves.
4.Trademark Act of 1999