Assignment and Transmission of Trademark .
Assignment and Transmission of Trademark
1. Meaning of Trademark Assignment and Transmission
a) Assignment of Trademark:
Assignment refers to the transfer of ownership of a trademark from one party (assignor) to another (assignee).
It is a voluntary act, usually by contract, where all rights in the trademark pass to the assignee.
Assignment may be with goodwill of the business or without goodwill.
b) Transmission of Trademark:
Transmission is a transfer of trademark rights by operation of law, not by contract.
This occurs due to events like death, insolvency, merger, or succession.
It generally happens without the consent of the trademark owner.
2. Types of Trademark Assignment
a) Assignment with goodwill:
The trademark is transferred along with the goodwill of the business.
The trademark continues to represent the same source of goods or services.
This is the most common and valid form of assignment.
b) Assignment without goodwill:
The trademark is assigned separately, without transferring the goodwill.
This is generally not valid, because a trademark is a symbol of origin and reputation, which depends on goodwill.
Assigning a trademark without goodwill can mislead consumers.
3. Key Features of Assignment and Transmission
| Aspect | Assignment | Transmission |
|---|---|---|
| Nature | Voluntary transfer by contract | Transfer by operation of law |
| Requires Consent | Yes | No |
| With Goodwill | Usually required | Not applicable |
| Registration | Must be recorded in Trademark Registry | May be recorded if applicable |
| Examples | Sale of business, licensing deals | Death, insolvency, merger |
4. Legal Effect of Assignment and Transmission
The assignee or successor steps into the shoes of the assignor and enjoys all the rights.
The trademark must continue to be used in connection with the goods/services for which it is registered.
The goodwill must be preserved to avoid misrepresentation.
5. Important Case Law on Assignment and Transmission of Trademark
Case 1: Maharaja Shree Umaid Mills Ltd. v. M/s. R.P. & Co.
Facts: The court dealt with whether a trademark assignment without goodwill was valid.
Held: The court held that an assignment of trademark without the goodwill of the business is invalid.
Principle: Trademark is inseparable from goodwill; assignment without goodwill is not allowed as it misleads the public.
Case 2: Shree Ganesh Jewellery House v. Aircon Engineering Co.
Facts: The case involved trademark transmission due to merger.
Held: Transmission of trademark rights occurs automatically by operation of law on merger, and the successor company acquires the trademark rights.
Principle: Trademark rights pass on by transmission in events like mergers or demergers.
Case 3: Amritdhara Pharmacy v. Satya Deo Gupta
Facts: The issue was related to whether an assignment was valid.
Held: The Supreme Court emphasized the importance of goodwill in trademark assignments and upheld that an assignment without goodwill is void.
Principle: Reinforces the principle that trademark assignments must include goodwill.
6. Practical Considerations
Recording: Assignments and transmissions should be recorded in the Trademark Registry for public notice.
Goodwill Preservation: Care should be taken to preserve goodwill during assignment to avoid confusing consumers.
Use: The trademark must continue to be used in relation to the goods/services specified.
Summary
| Concept | Explanation | Case Example |
|---|---|---|
| Assignment | Voluntary transfer of trademark rights, usually with goodwill. | Maharaja Shree Umaid Mills Ltd. |
| Transmission | Transfer by operation of law (death, merger). | Shree Ganesh Jewellery House |
| Assignment without Goodwill | Invalid as it misleads public and damages trademark reputation. | Amritdhara Pharmacy |
Conclusion
Assignment and transmission are key mechanisms for the transfer of trademark rights.
Assignments are contractual and must ideally include goodwill.
Transmissions occur by law in events like death or merger.
Courts protect the public interest by ensuring goodwill accompanies assignments, preserving the trademark’s reputation.
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