Trademark assignment

Like any other property/ asset, the owner of the trademark (i.e., the assignor) has the right to sell, license, or transfer the same. The transfer of a trademark is possible through the Trademark Assignment Agreement or Trademark Licensing.

The current article explains the term trademark assignment along with its advantage, types of trademark assignment, pre-requisites, and procedure of trademark assignment.

Understanding the term trademark assignment 

The term trademark assignment is defined under section 37 of the Trademark Act, 1999. As per the definition, the trademark assignment means transferring the owner’s right, and interest and the title is a trademark and a brand mark.

In simple words, the process of transferring the right and ownership of the trademark to any other person is known as a trademark assignment.

Some of the advantages of the trademark assignment (concerning both the owner and the buyer) are listed hereunder-

• The trademark assignment enables the owner of the trademark to encash the value of his brand.
• With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
• The assignment of the trademark supports both the assignor and the assignee to expand their respective business.
• In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.

Types of trademark assignment

There are four types of trademark assignments-

1. Partial assignment,
2. Complete assignment,
3. An assignment with Goodwill, and
4. An assignment without Goodwill/ Gross assignment.

All the four types of trademark assignments are briefly explained hereunder-

1. Partial assignment-

Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.

1. Complete assignment-

Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.

1. An assignment with Goodwill-

Under ‘assignment with Goodwill’, the assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.

1. Gross assignment or Assignment without Goodwill-

Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.