IPR assignment provisions after Trademark Registration

After successful Trademark Registration the owner of such Trademark has a complete and undisputed right over it. As your business grows you partner with other businesses and entrepreneurs. In such situations you can delegate the rights associated to your trademark to the other party. This delegation of rights is termed as trademark assignment.

This delegation of intellectual property via Trademark assignment can either be complete or partial in nature. When the delegation is temporary in nature i.e. time based, product or services based, event based etc. then it is termed as licensing.

Is registration of Trademark Assignment necessary?

Yes, registration of all kinds or trademark assignment is mandatory in nature. Provisions relation to registration requirements of trademark assignment are specified in Section 38 of Trade Marks Act, 1999 and Rule 68 of Logo Rules, 2002. As per this Section any assignment of Trademark either it is partial or complete assignment is required to be registered. In case of non-registration such assignment will not be considered valid or legal.

Other than the registered trademarks as per Section 39 of Trade Marks Act, 1999 even without trademark registration done an unregistered mark can also be assigned without goodwill.

Types of Trademark assignment

Complete Assignment

All the intellectual property rights relating to the trademark created at the time of trademark registration are transferred to other party.

Partial assignment

Here, only set of rights are delegated. Such rights can relate to either a particular goods or services or rights to collect royalties.

Assignment with goodwill

Here assignment is done in relation to any particular business of goods or services for which trademark registration is done. All the intellectual rights relating to that particular business and its goodwill are assigned.

Assignment without goodwill

Unlike the case of assignment with goodwill, here the assignment is restricted to only the use of trademark and not the goodwill of the existing business. After trademark registration the owner of such trademark can assign it to be used by assignee for any other business vertical.

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