🔷 ASSIGNMENT OF TRADEMARK – LEGAL NOTE(Intellectual Property Rights){Part – 1 of 2}

[YAGAY andSUN]

🔷 ASSIGNMENT OF TRADEMARK – LEGAL NOTE

(Intellectual Property Rights)

{Part – 1 of 2}

Below is a comprehensive professional note covering the Introduction, Definition, Types of Assignment, and the Legal & Regulatory Framework governing Assignment of Trademarks in India under the Trade Marks Act, 1999

✅ 1. Introduction

A trademark is an intellectual property right that distinguishes the goods or services of one entity from those of others. Like any other property, a trademark is assignable and transferrable, subject to the provisions of law.

Assignment of a trademark refers to the transfer of ownership rights from one person or entity (assignor) to another (assignee), either with or without the associated goodwill of the business.

Assignment ensures that the brand equity and associated rights can be monetized, merged, franchised, or leveraged in corporate restructuring.

✅ 2. Definition of Assignment (Trademark Law)

Under Section 2(1)(b) of the Trade Marks Act, 1999, the term “assignment” means:

"An assignment in writing by act of the parties concerned."

Further, Section 37 of the Act provides that the registered proprietor of a trademark shall have the power to assign the trademark, with or without the goodwill of the business concerned.

✅ 3. Types of Trademark Assignment

Trademark assignments can be categorized into the following types based on nature and scope:

🔹 (A) Complete Assignment

• Entire rights in the trademark are transferred to the assignee.
• Assignee becomes the new owner and can use, license, or further assign the trademark.
• Example: Company A assigns all rights of its registered trademark “X” to Company B.

🔹 (B) Partial Assignment

• Assignment is restricted to specific goods/services or to a particular territory/geographic area.
• The assignor retains ownership for remaining categories.
• Example: Trademark "Y" assigned for cosmetics but retained for pharmaceuticals.

🔹 (C) Assignment with Goodwill

• The trademark is assigned along with the business reputation, customer base, and associated rights.
• The assignee can continue to use the mark for the same business segment.
• Considered more valuable and legally sound.

🔹 (D) Assignment without Goodwill (Gross Assignment)

• The trademark is assigned without transferring the associated goodwill or reputation.
• The assignee cannot use the mark for similar goods/services that the assignor used it for.
• Requires express permission of the Registrar under Section 42 of the Act.

✅ 4. Legal & Regulatory Framework

The assignment of trademarks in India is governed by the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The key provisions are:

Provision	Description
Section 37	Right of registered proprietor to assign the trademark
Section 38	Assignability and transmissibility of registered trademarks
Section 39	Assignability and transmissibility of unregistered trademarks
Section 40	Restrictions on assignment resulting in multiple exclusive rights
Section 41	Restriction on assignment where goodwill is not assigned
Section 42	Procedure for assignment without goodwill (requires Registrar’s direction)
Rule 75 of Trade Marks Rules, 2017	Filing of application in Form TM-P for registering assignee as the new proprietor
Stamp Act	Assignment deeds must be duly stamped as per relevant State law

✅ 5. Registration of Assignment with Registrar

Though assignment can be executed by contract, it is advisable and often necessary to register the assignment with the Trademark Registry to effectuate change in ownership in public records.

• Form TM-P must be filed along with:
  • Assignment Deed
  • Affidavit (if applicable)
  • Power of Attorney
  • Registration Certificate
• Registrar may call for proof of title or clarification before approving the request.

✅ 6. Judicial Precedents

Indian courts have upheld the validity of trademark assignment agreements even prior to registration, subject to proof of genuine transfer and absence of confusion in trade.

• Caterpillar Inc. v. Jorange – Delhi HC recognized assignment even when assignee had not yet registered as proprietor.
• Courts emphasize that assignment must not result in deception or confusion to public.

✅ 7. Key Takeaways

• Trademark is a movable intangible asset and assignable.
• Assignment can be with or without goodwill.
• Requires a written deed and, for registered marks, an application to the Registrar.
• Assignment without goodwill needs approval from Registrar under Section 42.
• Timely registration of the assignment ensures public notice and legal clarity.

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