Despite not having registered the mark, the assignment deed can be signed without the mark having been registered; innovative creators and inventors, for example, are often asked to transfer ownership of their work to the company that hired them. As well as newly registered trademarks, already registered trademarks can also be assigned. An assignee must contact the trademark registrar within six months of taking over the trademark. Learn more about this article for more information on what the assignment agreement provides.
Why Do I Need a Trademark?
An organization can trademark its products and services by including a sign, a name, a logo, or any combination of these. The reason for this is to differentiate its products and services from those of its competitors. A design, a logo, a phrase, a word, a name, or a signature can all be part of one.
Having your trademark registered will help you prevent your trademark from being copied or misused by third parties without your permission. TRIPS, or Trademark Related Aspects of Intellectual Property Rights, covers trademark law from articles 15 to 2 of the treaty. Trademarks that are renewed over one year before their end date will receive seven years of protection under the trademark agreement.
What is Trademark Assignment Agreement?
This agreement describes how a trademark owner transfers rights, title, and interest and to the trademark. A trademark is assigned to the assignee when the assignor transfers its trademark rights. The assignment differs from a license. This is the process of obtaining permission to use a trademark; it doesn’t transfer ownership rights and is associated with a TTA. An additional Intellectual Property (IP) may result in the company being unable to fulfill its obligations, making an agreement of this nature all-important. Assignment of trademarks is also important for monetization.
Various ways to assign a trademark
- Trademark assignment agreement with complete ownership: In this type of assignment, the trademark owner transfers all rights and ownership of their trademark to the other party. Other rights, besides the assignment, may be transferred next. In the event of a valid trademark assignment, the trademark owner loses all rights and ownership in the trademark, and the assignee takes over the trademark rights and ownership of the trademark.
- An assigned trademark is assigned to a limited number of products and services as part of a partial assignment. As part of a trademark assignment, the assignor retains all rights to the portion of the mark that will not ultimately be owned by the assignee. The assignor is the only one who may choose the partial agreement type. The assignee may then use these rights in the course of its business management/operation.
- The assignee can transfer both trademark ownership rights and goodwill rights associated with the trademark when an assignment of rights to a trademark using goodwill occurs. This can then be used by the assignee to market the product using the trademark’s market reputation
- When Goodwill is not conveyed: The assignor may restrict the assignee from using the trademark in the assignee’s business. Also, the assignee may restrain the assignee from using the trademark in its product. In different fields of business, both the assignee and assignor use the same trademark. An assignation of a gross trademark also falls into this category. The Trade Marks Act, section 40, places some limitations on the assignment of registered trademarks, which can cause confusion among the public.
Why is Trademark Assignment Agreements Beneficial?
Here are the main advantages of a trademark assignment agreement:
- A trademark assignment agreement unlocks the value of a brand, which was previously locked up. is valuable on paper. On the other hand, the assignee may be wiser to enter a market with an already well-established brand rather than creating a new one, which takes more time and money
- In the event of a dispute over the trademark, the deed can prove the legal ownership rights. As the trademark registrar, it is your responsibility to ensure all checks are in place by verifying the validity of each clause in the trademark agreement. Typically this is done by publishing them in the trademarks journal.
The assignment of a trademark
Section 45 of the Trade Marks Act, 1999, defines the term “trademark assignment”. If an individual is permitted by assignment to use a trademark, they should apply to the trademark registrar to have their rights recognized. Once the trademark registrar receives a trademark assignment application, the applicant is registered as the trademark owner for the products and services.
Should there be any judicial doubt about the statement’s reliability or any document provided, the trademark registrar may require additional documents as proof of name/title.
If the parties are unable to agree on the trademark assignment validity, the trademark registrar may reject the registration and retain it until the parties’ rights have been determined by a competent court. By failing to apply in the manner outlined above, someone will not be able to assume ownership of the trademark if they acquire a conflicting interest without understanding the assignment.
Agreement for transmission
Generally, trademarks are transferred by way of a trademark assignment agreement, which specifies that the trademark will pass from one entity to another, which in turn will become the owner of another entity.
If you are drafting such an agreement, you should ensure that:
- Trademark owners are not adversely affected by obligations, despite subjecting themselves to obligations
- It has been decided whether goodwill should be included in the trademark assignment or excluded
- The agreement should be drafted with an eye on the desired outcome.
Licensed trademarks are subject to license agreements. As per the Trademark Act, 1999, the registrar does not necessarily need to be contacted in the case of an agreement. While drafting a license agreement, the licensee’s responsibilities and rights ought to be clearly outlined. To protect the licensor’s right to use its own brand, to prevent any misappropriation, and to prevent the licensee from unauthorised use of the brand is essential.
The final word
Intellectual property consists of several key elements, including assignment agreements. Owners may transfer ownership rights for commercial purposes, ensuring that the owner derives financial gains. In a written contract, there is a transfer of rights that is legally enforceable between two parties. Each of the parties or entities to the contract is outlined and their exclusive rights are protected. Furthermore, the assignee is granted full ownership of the assignor’s trademark as part of this agreement.