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Assignment of Trademark 23015

The document outlines the concept of trademark assignment, which involves the transfer of ownership of a registered trademark and is governed by the Trade Marks Act, 1999 in India. It details the legal requirements, importance, and process of assignment, including necessary documentation and restrictions to prevent confusion. Landmark cases are cited to illustrate the legal precedents surrounding trademark assignments.

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9 views13 pages

Assignment of Trademark 23015

The document outlines the concept of trademark assignment, which involves the transfer of ownership of a registered trademark and is governed by the Trade Marks Act, 1999 in India. It details the legal requirements, importance, and process of assignment, including necessary documentation and restrictions to prevent confusion. Landmark cases are cited to illustrate the legal precedents surrounding trademark assignments.

Uploaded by

nishi3838381
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© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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ASSIGNMENT OF

TRADEMARK

SUBMITTED TO:- DR. GEETIKA


SOOD
INTRODUCTION TO
TRADEMARK
WHAT IS TRADEMARK:

1 A recognizable sign, design, or expression identifying


products or services.

2
Governed by the Trade Marks Act, 1999 in India.
3
Protects brand identity and prevents misuse.
WHAT IS ASSIGNMENT OF
TRADEMARK
•Definition and Scope Legal Requirements

The law mandates that any


Trademark assignment refers to the transfer of
assignment must be recorded with
ownership of a registered trademark and application
the trademark registry, and the
pending registration. Section 39 of the trademark act
assignor must hold valid ownership
governs this transfer, specifying conditions and
at the time of the transfer. This
procedural requirements to ensure lawful transfer and
section also distinguished voluntary
protection of trademark rights.
assignment of transfers by operation
of law, each having distinct
implications.
LEGAL PROVISONS

• Section 37: Power of the registered proprietor to assign.

• Section 38: Assignability and transmissibility of registered trademarks.

• Section 39: Assignability and transmissibility of unregistered


trademarks.

• Section 40-43: Restrictions and procedures for assignment.


Assignment Process: Step-by-
Step Guide
Agreement Drafting
1 Draft a precise assignment agreement detailing terms, parties,
and rights transferred.

Execution & Delivery


2 The assignor executes the agreement and delivers trademark
rights to the assignee.

Application to Registrar (Form TM-P)


3 Submit the assignment to the Trademark Registry for official
recordal and publication.

Certificate Issuance
4 Upon approval, a certificate of assignment is issued, finalizing
the transfer legally.
IMPORTANCE OF ASSIGNMENT
• Enables brand expansion and monetization -
Enables trademark owners to earn revenue by selling or
transferring the rights to others.
Companies can acquire trademarks to expand product lines or enter new
markets.
• Legal Protection -
A properly assigned trademark ensures clear ownership rights, helping to
prevent disputes over usage.
• Avoids Legal Disputes -
A documented and registered assignment legally proves ownership, avoiding
conflicts between parties.
In absence of a proper assignment, disputes can arise over who has the right to
use the trademark, especially in cases of business splits or partnerships.
• Flexibility in Business Strategy -
Assignment can be done with or without goodwill, allowing for tailored
business arrangements.
For example, a brand name can be assigned to a different product category
TIME LIMIT AND CONDITIONS

• Assignment must be registered within 6 months.

• Registrar may refuse if likely to cause confusion or deception (Section


40).
-Section 40 of the Trade Marks Act, 1999 restricts the assignment
or transmission of a trademark in certain circumstances,
particularly when it would create multiple exclusive rights that could
lead to deception or confusion.

• Proper advertisement may be required as well as a copy of the


advertisement.
RESTRICTIONS UNDER SECTION
40 AND 41
• No assignment that creates exclusive rights in more than one person for similar goods/services likely to cause
confusion.
• Example: Company A owns the trademark "FRESHZ" for packaged fruit juices across India.
• A assigns the "FRESHZ" trademark to:
• Company B for the North India market, and
• Company C for the South India market.
• If both B and C have exclusive rights to use "FRESHZ" in their respective regions, and their territories overlap
or cause confusion among consumers (especially through online sales), this assignment may be void under
Section 40.

• Section 41: Assignment or transmission when exclusive rights would be created in different parts of India.
• Example: Company X owns the mark "MEDIPRO" for pharmaceuticals.
• X assigns the trademark to:
• Company Y for use on painkillers
• Company Z for use on anti-inflammatory drugs
• Since both goods fall under similar pharmaceutical categories and are sold to similar target consumers, the
assignment to Y and Z may be seen as likely to deceive or confuse the public. This may be prohibited under
LANDMARK
CASE 1
• Case: Amritdhara Pharmacy v. Satya Deo Gupta (1963 AIR 449)

• Facts: Dispute over similar trademark usage.

• Held: Assignment without causing confusion is valid.

• Significance: Reinforced consumer protection during trademark transfers.


LANDMARK
CASE 2
• Case: Tech Plus Media Pvt. Ltd. v. Jyoti Janda & Anr. (2014)

• Facts: Dispute on partial assignment and continuation of use.

• Held: Trademark can be assigned partially if it doesn’t mislead public.


LANDMARK
CASE 3
• Case: Tata Sons Ltd. v. Manoj Dodia & Ors. (2011)

• Facts: Unauthorized usage after an attempted assignment.

• Held: Assignment not valid without proper documentation and registration.

• Significance: Emphasized formal procedure for assignment.


CONCLUSION
• The assignment of a trademark is a crucial aspect of intellectual property law
that facilitates the transfer of proprietary rights from one party to another. It
allows the trademark owner to monetize their brand by assigning it either with
or without goodwill, depending on the commercial arrangement and regulatory
compliance. Governed under Sections 37 to 42 of the Trade Marks Act, 1999,
the law ensures that such transfers do not lead to public confusion, uphold the
distinctiveness of trademarks, and maintain fair competition in the market.
• According to the Trade Marks Act, 1999, this transfer can happen with or
without the goodwill of the business. It must be done through a written
agreement and should be recorded with the Registrar of Trademarks. This
makes the new owner the legal holder of the trademark.
• Overall, assignment of trademark is a useful and important process that helps
businesses grow and ensures that the brand’s rights are protected under the
law.

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