Assignment and licensing of Trade Marks
Assignment of Trademarks
Assignment means transferring ownership of a registered trademark (or an application for registration) from the current owner (assignor) to another person (assignee).
Key Points:
Types of Assignment:
Assignment in respect of the whole India or a specified territory.
Assignment for all goods/services or limited to particular goods/services.
Assignment with goodwill: Usually trademarks are assigned with goodwill of the business connected with the mark, because the value of a trademark depends on the goodwill of the business.
Form of Assignment:
Must be in writing and signed by the assignor.
If assigned without goodwill, the assignee cannot sue for infringement.
Registration of Assignment:
The assignment must be registered at the Trademark Registry.
File Form TM-P with relevant documents (assignment deed, power of attorney, etc.).
Registration of assignment gives public notice of change of ownership.
Until the assignment is registered, the assignor remains the legal owner.
Effect:
Once registered, the assignee becomes the new owner of the trademark with all rights.
Licensing of Trademarks
Licensing means the trademark owner (licensor) grants permission to another party (licensee) to use the trademark under certain conditions, while the ownership remains with the licensor.
Key Points:
Types of Licenses:
Exclusive license: Licensee has exclusive rights to use the trademark in a specific area or for particular goods/services.
Non-exclusive license: Licensor can license the mark to multiple parties.
Form of License:
Must be in writing.
Usually includes terms about quality control, duration, territory, fees, etc.
The licensor is responsible for maintaining the quality of goods/services to protect the trademark’s goodwill.
Registration of License:
The license can be registered by filing Form TM-L.
Registration is optional but recommended for legal protection.
It provides public notice and helps in enforcement against unauthorized use.
Effect:
The licensee gets the right to use the trademark but does not become the owner.
The licensor retains ownership and control.
Why Register Assignment or License?
Registration provides legal recognition.
Protects rights of the new owner (in case of assignment) or licensee.
Provides public notice to third parties.
Helps in enforcement and dispute resolution.
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