™ Agreements

Agreement For ™ Assignment:

Assignment or transmission of a trade mark is the process by which ownership of a registered trade mark or a trade mark application may be passed from one party to another whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is required to be recorded in the Register of trade marks.

A mark may be assigned or transferred to another entity in any of the following manners:

Complete Assignment to another entity- The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties.

Assignment to another entity but with respect to only some of the goods/ services- The transfer of ownership is restricted to specific products or services only. This is called partial assignment.

Assignment with goodwill- Such assignment is where the rights and value of a trademark as associated with the product is also transferred to another entity

Assignment without goodwill- Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer. In many jurisdictions like United States, assignment of mark without goodwill is not allowed at all. India on the other hand allows assignment without goodwill.

Further, in case of registered Trademarks, the Trade Mark Act 1999 also puts certain restrictions on the assignment of a registered trade mark wherein there exist possibilities of creating confusion in the mind of public/users. Such restrictions are:

Restriction on assignment that results in the creation of exclusive rights in more than one persons with respect to the same goods or services, or for 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.

Agreement For ™ Licensing:

The licensing of a mark is to allow others to use the mark without assigning the ownership and the same may be done for all or some of the goods and services covered. The Trademarks Act does not mention the term 'License', the concept under the Act is mentioned as that of a 'Registered User'.

Trademark licensing is advantageous to both the parties. While the licensor enjoys its rights to the mark by getting the royalties for its use, the licensee is able to expand its market operations by using the brand and developing its reputation.

In case of Licensing, the licensor is open to license the rights over the trademark in manner it may like. The Licensor can restrict the rights of the licensee in a trademark or brand with respect to the products or services wherein the licensee can use such brand, with respect to time for which it can use such mark, with respect to area within which it can use such mark etc.

Agreement For ™ Transmission:

A trade mark is generally assigned by way of a properly executed Trademark Assignment Agreement which pertains to the transfer of the mark from one person or entity who is the owner to another. It is to be ensured when drafting such agreement that:

The rights of the owner of the brand are not detrimentally affected due to the obligations contained.

The requirement and decision regarding whether the assignment should be with or without the goodwill of the business is explicitly mentioned and negotiated

The agreement should be drafted keeping in mind the purpose of the transaction in question

A mark is licensed by way of a License Agreement. Further, like in an Assignment agreement, it is again very important that while drafting a License Agreement, the rights and duties of licensee are distinctively pre determined and defined.

When it comes to Intellectual Property Rights, We don’t take Chances.
What About you?

image
image
image
image
image
image
image
image
image
image
image
image
image
image
image
image