All You Need to Know About Trading Trademarks – Mergers, Assignments, and Transmissions
Trademarks are IP or Intellectual Property, and they are recognized as a unique mark, which assists in remembering and distinguishing the products and services of one individual or company from another. Here the mark is in its distinctive and original form used by the owner to make it effortlessly identifiable. In terms of legal, it can be known as a symbol or name that a company uses on their products, and that cannot lawfully be used by any other company or individual. Transmission and assignment are incorporated under the Trademark Registration. Scroll down to check more information regarding the trading Trademarks for mergers, assignment, and transmission.
An Overview of Trademark – Section 2 (1) (zb)
Trademark is defined by the Trade Marks Act as a mark that is proficient of being represented graphically and which is capable of differentiating the products/services of one person from others, which consists of the shape of goods, combination of colours, and their packaging.
A Trading relating to services is that where the mark is used concerning the services, for the purpose of representing the trade course between the products or services, and the individual has the right to use the mark.
What is the Meaning of Trademark Assignment under the Idea of Trading Trademarks?
As per Section 2 (1) (b), Trademark Assignment means an act by the parties in writing. A Trademark Assignment will be through an instrument in writing between the assignee & assignor and implemented by them. The assignment of a Trademark is not a unilateral Act between the parties. It should be carried out by both parties. Trademark Assignment means the transfer of all the rights of an owner, title of the owner and owner’s interest in a Trademark or Service Mark. The transferring party transfer all the rights to the receiving party, and it means the assignor is moving to the assignee.
What are the Different Features of Trademark Assignment under Trading Trademarks?
Following are some features of Trademark Assignment under Trading Trademarks:
- There is a difference between Trademark Licensing and Trademark Assignment. Where the license of Trademark means that a grant of authorization to use the mark where no transfer of ownership in the mark happens;
- Section 37 deals with the Trademark Assignment, and it also says that the registered owner can assign their ownership rights in a Trademark to any other individual.
As per this section, the registered owner has the legal right to assign the Trademark after receiving the deliberation. It represents in the association of the act that the registered owner of the Trademark has the right to vest the Trademark rights in any other individual. This is the assignment process and gives the adequate receipts for any consideration for such assignment;
- It can be concluded that an already registered Trademark is transmissible & assignable concerning all the products or services in respect of the registered Trademark.
Trademark Transmission – Meaning
Trademark Transmission under Trading Trademarks means where the Trademark is transferred by the law operation or transference on the representation of the dead person. This is not a Trademark Assignment, where the Trademark is transferred because of some reason of transferred and law to their lawful representatives. It can be well said that any type which is not assigned but transmitted. It can be concerning the products or services and limited to some products or goods, and it can be with or without goodwill.
How are Trademarks Transmitted or Assigned?
The Trademarks are transmissible, assignable both, or can be combined. The trading Trademarks cover the idea of merger, transmission, and assignment of Trademark. The present system, followed by the Indian Trademark, permits for the changes and records in the Trademark owner’s details in two different ways;
- Change the owner name – by the merger;
- Changes due to the Transmission or Assignment.
Here some examples where the transmission or assignment of Trademark is recorded:
- If Company A merges with Company B; both the companies have their Trademark and combines to form Company C. Company C has no Trademark of its own, here the merger will create Trademark transmission;
- There is a change in the Partnership Firm structure, that means there is a retirement or demise of either partner, then the Trademark posses by the partner shall be assigned or transferred or transmitted to the new Partnership;
- Company A sells their Trademark to Company B, which means Trademark Assignment;
- Company A combines with Company B; here, Company A has its Trademark, but Company B possesses the Trademark as the AB. This is the standard cage of a merger, where there is the transfer of the right by Company A. Here, the Trademark Assignment by Company A to Company B must be done.
What are the Types of Trademark Assignment under Trading Trademarks?
Following are some different types of Trademark Assignment under Trading Trademarks:
- Complete Assignment: It means the owner transfers their rights to another firm or company. There is a whole ownership transfer of Trademark by one individual to another. Here the Trademark owner earns the royalties from the complete transfer of Trademark ownership.
- Partial Assignment: Here, the Trademark Assignment is limited to the transfer concerning the particular products or goods. Such as the assignment of bakery products which is restricted or specific biscuits or breads only.
- Assignment With Goodwill: It means that the value and rights of Trademark are connected with the product is also transferred to other company. Brand A transfer the rights over the products, and any new creation concerning the product will also be transferred to them.
- Assignment Without Goodwill: It means the brand owner limits the right of the buyer and doesn’t permit him to use such brand for the products being used by the actual Trademark owner. The goodwill attached to the brand regarding the product already being sold under such brand is not transferred to such a buyer.
Such as, brand A is transferred to the owner; however, he or she cannot use the consideration pr goodwill attached to the brand in the bakery; they will have to improve their goodwill concerning the product he or she transferred.
It is concluded that trading Trademarks when the merger of companies occurs, then the transmission or assignment of Trademark is performed. The trading Trademarks, Assignment and Transmission of Trademark is incorporated under Trademark Registration.
There are some limitations attached to the transmission or assignment of the Trademark where the Trademark creates the customer’s confusion; it will not be assigned or transmitted. That means it is the same products or services, similar explanation of products or services or the description of products and services concerning the associated products or services. Whenever there is any alter in the Trademark owner, it should be notified to the Trademark Registrar; whether there is any merger, assignment, or transmission.
Read our article:How to File a Complaint Against Trademark Violation in India?