TRADEMARK REGISTRATION AND ASSIGNMENTS- An overview

WHAT IS A TRADEMARK?

According to sec(1)(zb) of Trademark Act, 1999, Trademark means a mark which can be represented graphically and it can differentiate a person’s services or work from other people. These essential were given by the Supreme Court in the case of Laxmikant V.Patel vs Chetanbhat Shah & Anr. It includes any shape, graphics or any icon which is used to a person to distinguish one’s good from another. The person using such a mark or a logo can apply for the trademark so no person other than him can use the same logo. All the logos of the brands, services have their logos trademarked so that there is no confusion between them and other brands.

OBJECTIVE OF TRADEMARK

The basic objective of a trademark is to prevent the consumers from being confused in products and secondly, to protect the producers’ goodwill and his brand’s identity.

HISTORICAL BACKGROUND

THE INDIAN MERCHANDISE MARKS ACT, 1889

This act was enacted before independence and due to certain shortcomings was repealed in 1940.

TRADE AND MERCHANDISE MARKS ACT, 1958.

This repealed the act of 1940 and continued for forty years. India by that had other requirements, therefore this act too was now considered as lacking important aspects.

TRADEMARK ACT, 1999

Finally this act was passed and it is still in use.

PROCEDURE FOR GETTING A TRADEMARK

According to section 18 of the act, any person can get the trademark by applying in an established manner to the Registrar and the application for registration has to be in writing. A single application for different classes of goods and services has to be filed. The application has to be filed in the office of the trademarks registry in the place of business of the applicant. A mark can be refused it is capable of deceiving the public, or if it hurt religious sentiments, or if it contains scandalous matter. If the application is accepted then the Registrar would ask the application for advertisement in a newspaper, or any media. In case of any objection to the trademark, the other person can claim such within four months of such advertisement. After this, there can be a procedure for clarification by the applicant and the submission of the counter statement. The final step is the registration of the trademark given in section 23 of the Act of 1999.

TRADEMARK ASSIGNMENT

There are two ways by which a person can permit some other person to use his/her trademark which is either by trademark assignment or trademark licensing. Licensing is when all the ownership rights are still with the original owner but in an assignment, you’re basically selling your trademark out and with it all the rights involved with them, including ownership right.

A trademark assignment is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party (“assignor”) transfers to the receiving party (“assignee”) its property rights in the mark. An assignment differs from a license, which is the grant of permission to use a mark in some manner but does not transfer any rights of ownership in the mark.

According to section 2(1) of the act, assignment means an assignment in writing by an act of the parties concerned. Section 37 to Section 45, talks about trademark assignment.

TYPES OF TRADEMARK ASSIGNMENT

Complete- there is a transfer of complete rights of ownership.

Partial- when the assignment is for some of the goods and services.

With goodwill- when the value of the brand or the trademark is also assigned.

Without goodwill- when there is no transfer of goodwill of the trademark. Or when the owner bars the new owner to sell the same products under the trademark of old goods being sold by the previous owner.

So section 38, says that a registered trademark can be assigned either along with goodwill or without it. Similarly, section 39 says that an unregistered trademark can also be assigned with or without goodwill.

TRADEMARK ASSIGNMENT AGREEMENT

It is to be kept in mind that the assignment takes places in a proper written form and for a consideration. Trade Marks Rules, 2002 governs the procedure for registration of a trademark assignment. Rules 68- 79 deal with the procedures for registering the assignment of trade mark[ii]

PROBLEMS AND RESTRICTIONS UNDER THE ACT FOR ASSIGNMENT OF REGISTERED TRADEMARK.

Restriction on an assignment that results in the creation of exclusive rights in more than one person with respect to the same goods or services, or for the same description of goods or services or such goods or services as associated with each other.

Restriction on assignment, that results in different people using the trademark in different parts of the country simultaneously.[iii]

CONCLUSION

IPRs are important to protect the authenticity and innovation of the seller. Trademarks are an important part of the same. These symbols become the identity of ones’ brand and their reputation. Trademark assignment is often used to increase the business by letting more people run your business and contribute to it. So issues relating to ownership of IPR must be carefully considered. Though the law provides safeguards, the slight ambiguity present in the Indian Trademarks Law on this point shall be dealt with by the legislature.[iv]

The author(Iqra Khan) is a second-year student of BALLB(Hons) at Jamia Millia Islamia.

REFERENCES

1. Intellectual Property Rights in India – V.K.Ahuja Volume 1
2. www.lexisnexis.com
3. [iv] Trademark assignments, International Trademark Association, available at https://www.inta.org/TrademarkBasics/FactSheets/Pages/Trademark%20Assignments.aspx
4. [iv] Origins of Intellectual property Law by Judith Silver. www.coollawyer.com
5. Trade Marks Act, 1999.
6. Vakilsearch.com
7. Intellectual Property Rights in India – V.K.Ahuja Volume 1
8. www.lexisnexis.com
9. [iv] Trademark assignments, International Trademark Association, available at https://www.inta.org/TrademarkBasics/FactSheets/Pages/Trademark%20Assignments.aspx
10. [iv] Origins of Intellectual property Law by Judith Silver. www.coollawyer.com
11. Trade Marks Act, 1999.
12. Vakilsearch.com
13. Trademark assignments, International Trademark Association, available at https://www.inta.org/TrademarkBasics/FactSheets/Pages/Trademark%20Assignments.aspx
14. Vaibhavi Pandey & Ayush Vats, REGISTRATION OF A TRADEMARK ASSIGNMENT: MERE FORMALITY OR A MANDATE , INTA, Volume VIII, Issue IV.
15. Trademark assignments, International Trademark Association, available at https://www.inta.org/TrademarkBasics/FactSheets/Pages/Trademark%20Assignments.aspx
16. Origins of Intellectual property Law by Judith Silver. www.coollawyer.com
17. Assignment of Trademarks in India, Lawyered, available at https://www.lawyered.in/legal-disrupt/articles/assignment-trademarks-india/”, last seen at 28 April,2020.