difference between assignment and transmission of trademark

Assignment and Transmission of Trademark

• Intellectual Property Rights Blogs Subject-wise Law Notes
• Aishwarya Agrawal
• May 23, 2023

Assignment and transmission of trademarks involve transferring ownership rights from one party to another. The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing between assignments with or without the goodwill and specifying requirements for registration and documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark.

The assignment of a trademark involves the complete transfer of ownership from one party to another. In this case, the assignee (the party receiving the trademark rights) assumes full control and responsibility over the trademark, including the right to use it exclusively for their own commercial purposes. The assignor (the party transferring the trademark rights) relinquishes all rights and interests in the trademark.

On the other hand, the transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

Both registered and unregistered trademarks can be assigned or transmitted. A registered trademark is one that has been officially registered with the relevant trademark office, providing the owner with statutory rights and protection. An unregistered trademark refers to a mark that has not been formally registered but may still possess some degree of protection based on common law or other legal principles.

Types of Assignment and Transmission of Trademark

Complete assignment and transmission.

Complete Assignment refers to the transfer of all rights associated with a trademark from one individual to another. This includes the rights to further transfer the trademark, receive royalties and exercise full control over its usage. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage and receive royalties. No approval from ‘X’ is required in this case.

Partial Assignment

Partial Assignment involves the transfer of ownership restricted to specific services or products. For example, if proprietor ‘X’ has a trademark (♛) related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.

Assignment with Goodwill

Assignment with Goodwill refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark (♛) to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.

Assignment without Goodwill

Assignment without goodwill involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark (♛) to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act outlines the conditions for the assignment and transmission of a trademark, specifically when it is not associated with the goodwill of a business. According to this section, the assignment or transmission of a trademark without goodwill will only be effective if the assignee applies to the registrar for directions regarding the advertisement of the assignment. 

The assignee must advertise the assignment within the timeframe specified by the Registrar, which should not exceed six months from the date of the assignment or an extended period of three months if permitted by the Registrar.

However, if the trademark is assigned along with the goodwill of the business for specific goods and services, it will not be considered an assignment without goodwill. Additionally, if the assignment includes goods for export or services used outside of India along with the assignment of goodwill, it is permissible.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment and transmission of trademarks to prevent confusion among users or the general public. These restrictions include

• Restriction on assignment or transmission that would create multiple exclusive rights.
• Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45)

The process for the assignment and transmission of a trademark, as described in Section 45 of the Trademark Act, involves the following steps:

• Application to the Registrar of Trademarks using Form TM-P, along with duly certified original documents.
• The Registrar will review the application and provide a decision within three months. The decision may include informing the applicant about the assignment or requesting additional proof if there are doubts.
• If the assignment is approved, the Registrar will make an entry in the Register, including details such as the name and address of the assignee, the date of the assignment, a description of the rights assigned (if applicable), the basis of the assignment and the date of entry in the register.
• In case of a dispute between the parties regarding the validity of the assignment or transmission, the registrar may refuse to register it until the rights of the parties have been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Assignment and Transmission of Unregistered Trademarks (Section 39)

According to Section 39 of the Trademark Act, an unregistered trademark can also be assigned or transmitted, with or without the goodwill of the business concerned.

Benefits of Assignment and Transmission of Trademark

Expansion of business: By assigning and transmitting a trademark, the owner can expand their business by using the same trademark in multiple locations simultaneously. Additionally, partial authority can be given to assign the trademark to more than one person.

Leveraging an established brand : Assigning and transmitting a trademark allows the assignee to benefit from an already established brand in the market, saving them the effort and resources required to create a new brand.

Legal proof: The assignment and transmission of a trademark serve as legal proof in case of any disputes related to trademark usage. The rights and liabilities associated with the trademark are clearly outlined in a legal document.

Monetary benefits: The owner of the trademark can enjoy monetary benefits through the assignment and transmission process, including any financial gains resulting from the assignment or transmission. Furthermore, operating with the same trademark in multiple locations can increase the value of the brand.

Structural Waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

In this case, a dispute arose regarding the assignment and transmission of a trademark. The court highlighted that the registrar has the authority to refuse the registration of the assignment and transmission until a decision is made by the competent court. The plaintiff claimed ownership of the trademark based on a Memorandum of Understanding (MoU) between the parties. 

However, the court rejected the plaintiff’s request for an injunction against the defendant. The court emphasised that a change in the name of the registered proprietor does not automatically render the trademark unsuitable.

Cinni Foundation v. Raj Kumar Shah and Sons [2009 (41) PTC 320 (Del)]

In this case, the trademark “CINNI” was being used by the owner. A deed of assignment had been executed and signed between the parties. However, it was later discovered that the trademark was not registered. The defendant attempted to claim rights over the trademark. The court ruled that according to the law, the assignee acquires no title to the trademark without the registration of the assignment deed. Consequently, the defendant’s claim to the trademark was dismissed.

These cases illustrate the importance of registration and proper documentation in the assignment and transmission of trademarks. Registration provides legal protection and establishes ownership rights, while adherence to the legal requirements ensures the validity and enforceability of the assignment or transmission of the trademark.

Difference between the Assignment and Transmission of the Trademark

Assignment and transmission are two terms often used interchangeably, but they are distinct concepts according to Section 2 of the Trademark Act. In the case of trademark assignment, there is a transfer of ownership of the registered trademark to another party. On the other hand, in the case of trademark transmission, the original owner retains the rights to the trademark but grants limited rights to a third party for its use.

For instance, let’s consider the example of X, the current owner of the trademark “œ,” who decides to assign the trademark to Y. In this scenario, X relinquishes ownership of the trademark and after a proper assignment process, Y becomes the registered owner with full rights to the trademark.

However, if X chooses to transmit the trademark instead, it means that X remains the original owner of the trademark, but grants limited rights and responsibilities to Y for its use.

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Assignment and Transmission of Trade Marks

We can trace development and use of Trade Marks from the days of industrial revolution. This was the face during which trade and commerce were at the top and world got an environment of good business practices. In industrial revolution era, various products had been developed, various innovations had been made. The industrial exploitation of various new goods was at top. The industrial revolution enabled large scale production and distribution of goods. With the emergence of competitive market economy, manufacturers began to identify their products by certain symbols. mark or devices so as to distinguish their goods from similar goods manufactured and marketed by others. In this phase the manufacturers were started to use some marks, symbol or device to distinguish their goods or services from others. They had also started marketing and advertising their goods by using trade mark. This led to trade mark acquiring goodwill and reputation among the customers.

In India first legislation in respect of Trade Mark was the Indian Merchandise Marks Act, 1889. This act followed by Trade Marks Act, 1940. Prior to the Trade Marks Act, 1940, the disputes or problems, especially those relating to infringement of trade mark or passing off were decided in the light of provisions of Section 54 of Specific Relief Act, 1877. The registration of Trade Mark were done by taking a declaration under provisions of the Indian Registration Act, 1908.

Further India became a party to the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement), it become mandatory for India to bring our Trade Mark Laws in conformity with TRIPs Agreement and hence India amended it’s the Trade Marks Act, 1940 and came out with the Trade Marks Act, 1999.

LET’S CONSIDER DEFINATION OF TRADE MARK

MERRIAN-WEBSTER: A trademark is a marketing device that visually sets a company or product apart from similar items trying to gain market share. Trademarks are forms of intellectual property that are unique to a company and or its products. Slogans, symbols, or inventive catchphrases are common examples of trademarks.

DICTIONARY.COM: Trademark definition, any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate specific goods and to distinguish them from those manufactured or sold by others.

  CAMBRIDGE ENGLISH DICTIONARY: a name or symbol on a product that shows it was made by a particular company, and that it cannot be used by other companies without permission.

COLLINS DICTIONARY: A trademark is a name or symbol that a company uses on its products and that cannot legally be used by another company.

INVESTOPEDIA: A trademark is a recognizable insignia, phrase, word, or symbol that denotes a specific product and legally differentiates it from all other products of its kind.

A Trade Mark includes any word, name, symbol, configuration, device, shape of goods, packaging, combination of colours or any other combination thereof which one adopts and uses to identify and distinguish his goods from the goods of others.

Section 2(1) (zb) is defined under the Trade Marks Act, 1999 as:

2(1) (zb)  “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and—

(i)  in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii)  in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;

THERE ARE THREE ESSENTIALS OF A TRADE MARK;

i) Is should be a mark;

ii) It should be capable of being represented graphically; and

iii) It should of distinguishing the goods or services of one person fromthose of others.

Laxmikant Vs. Patel V. Chetanbhat Sha, [AIR 2002 SC 275] SC held that definition Trade Mark is very wide and means inter alia, a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one-person form those of others.

MARK: Section 2(1)(m) of the Trade Marks Act, 1999 provides that “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

FUNCTIONS OF TRADE MARK

A Trade Mark, normally perform below mentioned functions;

i) It identifies the goods of one trade and distinguish them from goods sold by others;

ii) It signifies that all goods bearing a particular trade mark come from a single source;

iii) It signifies that all goods bearing a particular trade mark are of an equal level of quality; and

iv) It acts as a prime instrument in advertising and selling the goods.

LETS’ CONSIDER OUR TOPIC- ASSIGNMENT AND TRANSMISSION

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.

Section 37 recognises the right of registered proprietor to assign the trade mark for any consideration and to give receipt. It provides that subject to the provisions of the Act and to any rights appearing from the register to be vested in any other person, the proprietor of a Trade Mark has the power to assign the trade mark and to give effectual receipts for any consideration for such assignment.

It means that a registered owner /proprietor of a registered trade mark can assign his rights in trade mark to any other person.

A registered trade mark is assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.

ASSIGNMENT: Section 2(1)(b) of the Trade Marks Act, 1999 defines as “assignment” means an assignment in writing by act of the parties concerned. It means that an assignment must be in writing. An assignment will be through an instrument and both assignor and assignee must execute the instrument. The word used in definition “by act of the parties concerned”, means that assignor and assignee must execute the instrument and any unilateral act shall not constitute assignment.

  WHAT IS NECESSARY TO AFFECT A VALID ASSIGNMENT? Although the specific requirements for trademark assignments vary by jurisdiction, in most jurisdictions a trademark assignment, to be valid, must, at a minimum:

i) Be in writing;

ii) Identify the parties to the assignment, that is, the assignor and the assignee;

iii) Identify the mark(s) to be assigned and any relevant applications or registrations for the mark(s);

iv) Identify the goods and/or services to be assigned (in some jurisdictions, all the goods and/or services in an application or registration must be assigned);

v) Be given for consideration;

vi) Identify the effective date of the assignment;

vii) Be duly executed (some jurisdictions require that it be signed by all the parties to the assignment, while in others, execution by the assignor alone is sufficient); and

viii) Include the transfer of goodwill (required in certain jurisdictions). (In India, for example, a trademark can be assigned with or without goodwill, whereas in the United States an assignment without goodwill is considered an assignment “in gross” and considered invalid under U.S. law.)

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, etc. (E.g. X, the proprietor of a brand, sells his mark completely through an agreement to Y. After this X does not retain any rights with respect to the brand).
• 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. (E.g. P, the proprietor of a brand used for jams and jellies and dairy products. P assigns the rights in the brand with respect to only dairy products to Q and retains the rights in the brand with respect to jams and jellies.) 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.(E.g. P, the proprietor of a brand “Shudh” relating to dairy products, sells his brand to Q such that Q will be able to use the brand “Shudh” with respect to dairy products as well as any other products it manufactures.)
• 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. (E.g. P, the proprietor of a brand “Shudh” relating to dairy products, sells his brand to Q such that Q will not be able to use the mark “Shudh” with respect to dairy products but can use this brand for any other products being manufactured by it. In such case the goodwill which is associated with brand “Shudh” for dairy products is not transferred to Q and Q will be required to create distinct goodwill of brand “Shudh” for any other product or service like Restaurant wherein Q proposes to use this brand.).

 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.

RESTRICTION ON ASSIGNMENT OR TRANSMISSION: Section 40(1) of the Trade Mark Act, 1999

A Trade Mark is not assignable or transmissible in a case in which as a result of the assignment or transmission there would subsist exclusive rights in more than  one of the persons concerned, to use of trade mark, nearly resembling each other or identical trade mark which is likely to deceive or cause confusion , in relation to;

i) Same goods or services;

ii) Same description of goods or services; or

iii) Goods or services or description of goods or services which are associated with each other.

Of trade marks nearly resembling each other or of identical trade mark, if having regard to the similarly of the goods and services and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be likely to deceive or cause confusion.

PROVIDED THAT  an assignment or transmission shall not be deemed to be invalid under this sub-section if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to goods to be sold, or otherwise traded in, within India otherwise than for export there from, or in relation to good to be exported to the same market outside India or in relation to services for use at any place in India or any place outside India in relation to services available for acceptance in India.

REGISTRAR CAN ISSUE A CERTIFICATE IN THIS CASE

Section 40(1) of the Trade Mark Act, 1999

The proprietor of a registered trade mark who proposes to against it may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods or services and of the trademarks referred to in the case, the proposed assignment would or would not be invalid under sub-section (1), and a certificate so issued shall, subject to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of the assignment insofar as such validity or invalidity depends upon the facts set out in the case , but as regards a certificate in favor of validity, only if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date of which the certificate is issued.

It means that the proprietor of a registered trade mark, can apply with registrar to get a certificate on validity of assignment according to the provisions of Section 40(1) of the Trade Marks Act, 1999. The certificate from registrar will be the conclusive evidence on the validity of assignment.

RESTRICTION ON ASSIGNMENT OR TRANSMISSION WHEN EXCLUSIVE RIGHTS WOULD BE CREATED IN DIFFERENT PARTS OF INDIA.

SECTION 41 Restriction on assignment or transmission when exclusive rights would be created in different parts of India.—Notwithstanding anything in sections 38 and 39, a trade mark shall not be assignable or transmissible in a case in which as a result of the assignment or transmission there would in the circumstances subsist, whether under this Act or any other law—

(a)  an exclusive right in one of the persons concerned, to the use of the trade mark limited to use in relation to goods to be sold or otherwise traded in, in any place in India, or in relation to services for use, or services available for acceptance in any place in India; and

(b)  an exclusive right in another of these persons concerned, to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to—

( i)  the same goods or services; or

(ii)  the same description of goods or services; or

(iii)  services which are associated with those goods or goods of that description or goods which are associated with those services or services of that description, limited to use in relation to goods to be sold or otherwise traded in, or services for use, or available for acceptance, in any other place in India.

PROVIDED THAT in any such case, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or by a person who claims that a registered trade mark has been transmitted to him or to a predecessor in title of his since the commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest may approve the assignment or transmission, and an assignment or transmission so approved shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be deemed to be invalid under this section or section 40 if application for the registration under section 45 of the title of the person becoming entitled is made within six months from the date on which the approval is given or, in the case of a transmission, was made before that date.

REGISTRATION OF ASSIGNMENT

DISCRETION PROVIDED TO THE REGISTRAR UNDER SECTION 45 (2) OF THE TRADEMARKS ACT, 1999-

As per section 45 of the Act, an assignment deed needs to be registered in the appropriate form with the Trademarks Registry in order to bring the Assignee as an owner of the trademark on records. The Section runs as follows-

(1) Where a person becomes entitled by assignment or transmission to a registered trade mark he shall apply in the prescribed manner to the Registrar to register his title. And the Registrar shall on receipt of the application and on proof of title to his satisfaction register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register.

Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court.

  (2) Except for the purpose of an application before the Registrar under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs.

As per the provisions of Section 45 and Rule 68 of the Trademarks Act, 1999, an application to register the title of a person who becomes entitled by assignment or transmission shall be made in Form TM-24 or TM-23 as it is made by such person alone or conjointly with the registered proprietor. Further, as per the practices of the Indian Trademarks Office, an affidavit for no legal proceedings pending related with the trademarks which are subject of the merger is also to be filed on behalf of the transferee company. Now, in case of a merger, since a proprietor registered on record is no more in existence and hence an application for change in title shall be filed in the name of the transferee. The Registrar may require statement of case to be verified by an affidavit on form TM 18 and may call upon the person concerned to furnish such proof or additional proof of title as he may require for his satisfaction. On proof of title to his satisfaction, the registrar will register him as a subsequent proprietor of the trade mark in respect of the goods or services and shall cause the particulars of the assignment or the transmission to be entered on the register. Once the trademark is assigned with goodwill, the assignor cannot in the eyes of law have any interest in the trademark assigned and the assignee alone, as a person interested in the trademark assigned, can represent in opposition proceedings as a party to protect its interest.

The law empowers the registrar to refuse to register the assignment or transmission when the validity of an assignment or transmission is in dispute between the parties, until the rights of the parties have been determined by a competent court [section 47 (2)].

LETS’ CONSIDER SOME JUDICIAL PRONOUNCEMENTS:

 Radhakashan Khandelwal vs. Asst. Registrar of Trade Marks – The Delhi high court held that “it is true that the rules do not expressly require a notice to be issued or a hearing to be given to the party adversely affected by the order when an application on form TM 24 is made before the registrar, but there is in eye of law a necessary implication that the party adversely affected should be heard before an order for the removal of his name can be made against him.

Cott Beverage Inc., A Georgia … vs. Silvassa Bottling Company on 7 October, 20032-In this case, section 44 does not create a bar for filing a suit by the assignee whose application is pending disposal for registration. Discretion, however, is vested in the Court under Subclause (2) of Section 44 of the Act, whether to permit the said unregistered document in evidence or not. At the same time, it cannot be said that the procedure of registration of assignment is a mere formality. Section 44 has been incorporated merely as a safeguard by the Legislature in order to avoid the multiplicity of the proceedings and also in order to ensure that the various other laws prevailing in the country are safeguarded while registering the assignment. Thus, the grant of registration of assignment or transmission cannot be said to be a mere formality and on a conjoint reading of the provisions it will be apparent that the Registrar has to be satisfied after going through the application, which has to be filed in the prescribed form giving various particulars. In the present case, non-registration of the assignment will have to be considered as an important factor.

Shaw Wallace & Co. (supra)case- an application for impleadment of the assignee was under consideration. This court held that till the time the Registrar of Trade Mark, does not record the title in favour of the assignee, the deed of assignment cannot be admitted in evidence. However, the assignee was still impleaded as a party with direction to file the registration as and when accorded by the Registrar.

The above view of the Courts has also been contravened by other Courts. Emphasizing the fact that even if the assignment deed is not registered with the records of the Trademarks Registry, it, itself is a valid instrument and hence permissible to be taken as an evidence of the assignee’s title on the trademark.

Mohammad Zumoon Sahib vs. Fathimunnisa , it was held that the “registration of assignment is not a condition precedent to an action for infringement by the assignee and an assignor of registered trademark will not be disentitled to an action on infringement on ground that assignment was not registered.” The Madras court held that the law prescribes a procedure for the assignee or the representative to have registration of this title. The fallacy in the argument is that it is this registration by the Registrar under section 35(1) of the act that confers title. The title already exists in the legal representative and on proof of such title to his satisfaction; the registrar registers him as the proprietor of the trade mark. The plaintiff to the suit for infringement, whose name was not entered as subsequent proprietor, was allowed to maintain the suit on proof of prima Facie title to the mark.

Hindustan Lever Ltd. v. Bombay Soda Factory , it was held that “the plaintiff could not be non-suited merely because the change in the name of the registered proprietor had not been effected by the time suit was instituted. Registration of the name of the proprietor does not confer title on him. it is merely an evidence of his title. The plaintiff –company was the owner of the trademark in question at all times.”

 Modi Threads Ltd. v. Som soot Gola Factory and another , it was held that despite non-registration of the application the civil suit was maintainable. The court held that it is true that the plaintiff’s application for getting transferred and registered trade mark in its name in the office of the registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trademark at the hands of unscrupulous persons by filing an action in court of law for injuction.so this is clear prima facie for the court.

It is important to register assignment of trade mark, with concerned authority or registrar. An assignee dose not gets rights assigned to him from the assignor, without registration of assignment.

Assignment agreements are of considerable importance in IPR since they allow the intellectual property owners to transfer their intellectual property for commercial returns, ensuring intellectual property can be used for monetary gains as well. So, issues relating to ownership of IPR must be carefully considered. Though the law provides safeguards, but the slight ambiguity present in the Indian Trademarks Law on this point shall be dealt with by the legislature.

 However, another important thing the courts show that even without registration of assignment, a suit by the assignee is maintainable. If necessary, the suit may be stayed to enable the assignee to register the same. Therefore, it is an obvious fact that after an assignment or merger or transmission as the case may be the assignee has to step into the shoes of the assignor for purposes of any legal proceedings which are pending or indisposed.

Disclaimer:   The entire contents of this document have been prepared on the basis of relevant provisions and as per the information existing at the time of the preparation. Although care has been taken to ensure the accuracy, completeness, and reliability of the information provided, author assume no responsibility, therefore. Users of this information are expected to refer to the relevant existing provisions of applicable Laws and take appropriate advice of consultants. The user of the information agrees that the information is not professional advice and is subject to change without notice. Author assume no responsibility for the consequences of the use of such information.

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What is the Difference Between Assignment and Transmission of Trademarks?

Trademarks are types of intellectual property that are specific to a corporation or its products. Trademarks commonly include slogans, symbols, or inventively catchy words. A trademark is a word or phrase that identifies the items manufactured by a certain company. A trademark might be verbal, written, or registered. With a visual trademark, your brand can successfully and efficiently differentiate the items from those of other businesses. In the context of trademark transfer, a private limited company can voluntarily assign its trademark to another entity through a contractual arrangement, while a public limited company can also engage in such assignments. Assignment and Transmission of Trademarks – Trademarks are types of intellectual property that are specific to a corporation or its products.

Table of Content

Overview of Trademark Assignment

• Definition 

Section 37 of the Trademark Act of 1999 defines trademark assignment. According to the definition, trademark assignment refers to the transfer of the owner’s right, interest, and title in a trademark and a brand mark. In layman’s language, trademark assignment refers to the process of transferring the right and ownership of a trademark to another person. The assignment process typically involves a private limited company transferring its trademark rights to a limited liability partnership through a formal agreement.

• Benefits of Trademark Assignment

             Some of the benefits of trademark assignment are as follows:

• The trademark assignment allows the trademark owner to cash in on the value of his brand.
• A trademark assignment allows the assignee to receive the rights to an already existing brand.
• The trademark assignment allows both the assignor and the assignee to expand their respective businesses.
• In the event of a disagreement, the trademark assignment agreement allows the assignor or assignee to establish legal rights.
• Types of Trademark Assignment
• Complete Assignment 
• Partial Assignment
• Assignment with Goodwill
• Assignment without Goodwill

• Procedure of Trademark Assignment
• The initial stage is to apply to trademark assignment, either by the assignee the assignor, or both. The application must include all transfer data and be submitted on form TM-P, as specified in Rule 75 of the Trademark Rules 2017 .
• Once the application is ready, file it with the trademark registrar. It must be completed within three months of the acquisition of the proprietorship.
• When there is a trademark assignment with goodwill or of a registered trademark, the Registrar of a trademark must issue a directive before the expiration of three months (which can be extended). The Registrar will define the advertisement of the trademark assignment. The applicant must then make the appropriate advertisement. A copy of the advertising, as well as a copy of the Registrar’s direction, should be submitted.
• After reviewing all of the evidence, the Registrar will legally transfer the trademark from the original owner to the new owner.
• The name of the Assignee, i.e. the new owner, must be entered into the register as a new entry.

Overview of Trademark Transmission

• Definition: Transmission, as defined by the Act, is the transfer of a trademark by operation of law or devolution on the personal representative of a deceased person that is not an assignment. It indicates that a trademark is legally transferred from the proprietor to the other person or his legal representatives upon death. A transmission is any means of transfer that is not by assignment. Transmission might apply to either some or all of the trademarks in the products and services. It can be done with or without the goodwill of the company in question.
• Benefits of Trademark Transmission: Trademark transmission, which is frequently compelled by inheritance, bankruptcy, or business reorganization, provides various advantages. Transferring ownership to new parties ensures the continuous protection and use of valuable trademarks. This technique preserves b rand identification and accompanying goodwill, as well as customer trust and market presence. Furthermore, trademark transfer might aid in debt settlement or estate planning by facilitating the smooth transfer of assets. It simplifies legal obligations and gives the lawful successor control over trademark usage and licensing. Finally, trademark transmission protects a brand’s legacy and enables strategic adaptation to changing conditions, ensuring long-term success.

  Differences Between Assignment and Transmission of Trademarks

The phrases assignment and transmission are sometimes used interchangeably, however, they are different concepts under Section 2 of the Trademark Act . The difference between Assignment and Transmission of Trademarks can be seen as, in the case of trademark assignment, ownership of the registered trademark is transferred to another person. In the event of trademark transmission, the original owner retains ownership of the trademark but allows a third party restricted rights to use it.

Consider the case where X, the present owner of the trademark “oe,” desires to assign the property to Y. In this circumstance, X relinquishes ownership of the trademark, and Y becomes the registered owner with full rights to the trademark after a thorough assignment process.

If, on the other hand, X chooses to transmit the trademark, it means that X retains ownership of the brand but offers Y limited rights and obligations for its use.

Restriction on assignment or transmission

A trademark is not transferable or transmissible if, as a result of Assignment and Transmission of Trademarks, there would be exclusive rights in more than one of the persons involved to use a trademark that is nearly identical to another or identical trademark that is likely to deceive or cause confusion. Provided, however, that an assignment or transmission shall not be deemed invalid under this subsection if the exclusive rights subsisting as a result of thence within the persons concerned severally, with relevant limitations obligatory on that, like to not be exercisable by two or additional of these persons regarding merchandise to be sold, or otherwise listed in, within the Asian nation other than for export therefrom, or regarding sensible to be expo

To summarize, trademark transmission is an important legal process that allows for the seamless transfer of ownership and control of valuable trademarks. It ensures the continuity of brand name and related goodwill, whether due to inheritance, bankruptcy, or company restructuring. This procedure not only maintains customer trust and market presence but also helps with debt settlement and estate planning. When it comes to personal services taxation , individuals running a property business need to be aware of how their income and expenses are subject to specific tax regulations, as property-related income can have unique tax implications. Trademark transmission protects a brand’s legacy and adaptability to new circumstances through streamlining legal responsibilities and licensing. It is a critical instrument for ensuring long-term success and ongoing intellectual property rights protection in an ever-changing corporate landscape.

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Before legal recourse, attempt to negotiate a repayment plan with the debtor directly. Open communication can often lead to a mutually agreeable solution.

What Is the Difference Between Assignment and Transmission of a Trademark?

Did you know that one can transfer a trademark and even assign it? Is transmission of trademark and assignment one and the same or different? What is the difference between assignment and transmission of the trademark? Let us understand it in a better way in this article.

Trademarks are forms of intellectual property that are unique to a company and or its products. Slogans, symbols, or inventively catchy phrases are typical examples of trademarks. Trademark is a word or phrase that identifies the goods produced by a specific company. A trademark may be verbal, in print, or even registered. With a graphic trademark, your logo can distinguish your products from other businesses efficiently and effectively.

Table of Contents

How to Register for a Trademark?

To register a trademark, you must follow certain steps. The first step is to file an application with the trademark registrar. The application must include information about the trademark, including the name of the trademark owner, the place of origin, and the date of acquisition.

After applying, you will need to wait for approval. The trademark registrar may approve or refuse your application based on whether it believes that your trademark is likely to be infringed. If your application is approved, you will need to register the trademark with the registrar. This involves completing a Certificate of Registration (or Certificate of Use). You will also need to pay a fee.

Finally, you will need to monitor your trademark carefully to ensure that it is not violated. You can do this by monitoring filings with the trademark registrar and visiting online databases that contain information about trademarks. If you notice any violations of your trademark, you can take action by filing a lawsuit or sending a cease-and-desist letter.

Requirements for Trademark Assignment

• Trademark assignment must be informed in writing
• It should be done between two parties, the owner and the buyer
• The owner of the trademark must consent to the trademark assignment 
• There must be an adequate amount while assigning a trademark

Three Ways to Trademark Your Intellectual Property

Registering a trademark has many benefits. It can protect your intellectual property and give you the power to stand up against competitors in the marketplace. There are three areas that an organization should be focused on when looking at the ways to register their trademark: Name, Product Design, and a phrase or symbol.

Assignment of Trademark

When a trademark is transferred from one person to another, ownership and what limits the owner can change based on the terms and conditions of the transfer depending on whether it was registered or unregistered.

How The Assignment and Transmission of a Trademark Differ

The terms Assignment and Transmission are used interchangeably. An assignment is a transfer of ownership of a brand. In contrast, transmission is an agreement that retains ownership of a trademark but allows another party to use part of the trademark, but not the entire stamp duty for trademark assignment .

Trademark Transmission

Complete transfer.

This is the contract that transfers all rights, including rights to transfer or sell the property, rights to royalties or earn royalties on the property, and other similar rights from one individual to another.

Partial Transfer

This trademark transfer involves the transfer of only specific service marks or product marks.

Transfer with goodwill

A trademark assignment is the transfer of a trademark from one party to another based on the owner’s goodwill with all the rights and values.

Transfer without goodwill

A trademark transfer is when a company or trademark owner allows someone else to control the trademark, even if used for the same purpose.

On the whole, this article summarises the assignment and transmission of a trademark under the Indian Trade Mark Act of 1999.

Other Related Articles

• What Are the Steps in Trademark Assignment Process ?
• Why are Trademark Assignments important ?
• How Do You Assign a Trademark ?

About the Author

Nithya Ramani Iyer

Nithya Ramani Iyer is an experienced content and communications leader at Zolvit (formerly Vakilsearch), specializing in legal drafting, fundraising, and content marketing. With a strong academic foundation, including a BSc in Visual Communication, BA in Criminology, and MSc in Criminology and Forensics, she blends creativity with analytical precision. Over the past nine years, Nithya has driven business growth by creating and executing strategic content initiatives that resonate with target audiences. She excels in simplifying complex concepts into clear, engaging content while developing high-impact marketing strategies. Nithya's unique expertise in legal content and marketing makes her a key asset to the Zolvit team, enhancing brand visibility and fostering meaningful audience engagement.

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Home » What is the Difference Between Assignment and Transmission of Trademark?

What is the Difference Between Assignment and Transmission of Trademark?

“Difference Between Assignment and Transmission of Trademark”

Page Contents

Trademarks are forms of intellectual property that are unique to a company and or its products. Slogans, symbols, or inventively catchy phrases are typical examples of trademarks. A trademark is basically a word or phrase that identifies the goods produced by a specific company. A trademark may be verbal, in print, or even registered. With a graphic trademark, your logo can distinguish your products from other businesses efficiently and effectively.

• Deed Drafting
• Application for Trademark Assignment
• Latest Update
• Follow-ups with concerned Government Department

To register a trademark, you must follow certain steps. The first step is to file an application with the trademark registrar. The application must include information about the trademark, including the name of the trademark owner, the place of origin, and the date of acquisition. After applying, you will need to wait for approval. The trademark registrar may approve or refuse your application based on whether it believes that your trademark is likely to be infringed. If your application is approved, you will need to register the trademark with the registrar . This involves completing a Certificate of Registration (or Certificate of Use). You will also need to pay a fee.

Finally, you will need to monitor your trademark carefully to ensure that it is not violated. You can do this by monitoring filings with the trademark registrar and visiting online databases that contain information about trademarks. If you notice any violations of your trademark, you can take action by filing a lawsuit or sending a cease-and-desist letter.

According to Trademark Act 1999 , “Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.” Which in layperson language suggests that any sign-on product or service that creates it totally different from the opposite or simply to differentiate one from the opposite may be a Trademark.

Meaning of Assignment

Section 2(1) (b) of the logos Act, 1999 defines “assignment” means that AN assignment in writing by the act of the parties involved. It means AN assignment should be in writing. AN assignment is through an instrument and each party and recipient should execute the instrument. The word utilized in the definition “by an act of the parties concerned”, means the party and recipient should execute the instrument and any unilateral act shall not represent assignment.

To have a sound assignment what are the necessities?

Although the precise needs for trademark assignments vary by jurisdiction, in most Jurisdictions trademark assignment, to be valid, must, at a minimum:

• Be in writing.
• Determine the parties to the assignment, that is, the party and therefore the assignee.
• Determine the mark(s) to be assigned and any relevant applications or registrations for the mark(s).
• Determine the products and/or services to be assigned (in some jurisdictions, all the products and/or services in an application or registration should be assigned).
• Be for consideration.
• Determine the effective date of the assignment.
• Be punctually dead (some jurisdictions need that or not it’s signed by all the parties to the assignment, whereas in others, execution by the party alone is sufficient); and
• Embrace the transfer of goodwill (required inbound jurisdictions). (In India, as an example, a trademark is assigned with or while not goodwill, whereas within the U. S. AN assignment while not goodwill is considered AN assignment “in gross” and regarded invalid beneath U.S. law).

Requirements for Trademark Assignment

• Trademark assignments must be informed in writing
• It should be done between two parties, the owner and the buyer
• The owner of the trademark must consent to the trademark assignment
• There must be an adequate amount while assigning a trademark

What are the three ways to trademark your Intellectual Property?

Registering a trademark has many benefits. It can protect your intellectual property and give you the power to stand up against competitors in the marketplace. There are three areas that an organization should be focused on when looking at the ways to register their trademark: Name, Product Design, and a phrase or symbol.

What is the Assignment of the Trademark?

When a trademark is transferred from one person to another, ownership and what limits the owner can change based on the terms and conditions of the transfer depending on whether it was registered or unregistered.

What is Trademark Transmission?

• COMPLETE TRANSFER: This is the contract that transfers all rights, including rights to transfer or sell the property, rights to royalties or earn royalties on the property, and other similar rights from one individual to another.
• PARTIAL TRANSFER: This trademark transfer involves the transfer of only specific service marks or product marks.
• TRANSFER WITH GOODWILL: A trademark assignment is the transfer of a trademark from one party to another based on the owner’s goodwill with all the rights and values.
• TRANSFER WITHOUT GOODWILL: A trademark transfer is when a company or trademark owner allows someone else to control the trademark, even if used for the same purpose.

What is the assignment and transmission of a trademark?

Assignment and Transmission of a Trademark is a process in which ownership of the trademark is passed from one person to another with full or partial rights depending on the terms and conditions of the owner of the trademark. Registered and Unregistered Trademarks are assigned and transmitted from one person to another with or without the goodwill of the business concerned.

What is the difference between the assignment and transmission of a trademark?

• Generally, the terms Assignment and Transmission are used interchangeably but Sec 2 of the Trademark Act clearly distinguishes between Assignment and Transmission.
• In case of an assignment of a trademark, there is a change in the ownership of the registered brand and in case of Transmission, the right in the trademark continues to vest with the original owner but only a few restricted rights to use the brand/mark are given to the third party.
• For example, A is the owner of the trademark “NE” and decided to assign his trademark to B. It means that A will no longer have ownership of the trademark and after proper assignment B will be the registered owner of the trademark and will have all the rights to it.
• Whereas if A decided to do the Transmission of a Trademark it will mean that B is still the original owner of the trademark but he has just given restricted rights and liabilities to B to use the trademark.

What is the restriction on assignment or transmission?

Under Section 40(1) of the Trademark Act, 1999 , A Trademark is not transferable or transmissible during a case during which as a result of the assignment or transmission there would exist exclusive rights in additional than one among the persons involved, to use of trademark, nearly resembling one another or identical trademark, that is probably going to deceive or cause confusion, in regard to.

• Same merchandise or services.
• The same description of products or services; or
• merchandise or services or description of products or services that area unit related to one another.

Of trademarks nearly resembling one another or of identical trademarks, if having relevance the equally of the products and services and to the similarity of the trademarks, the utilization of the trademarks in the exercise of these rights would be seemingly to deceive or cause confusion.

Provided that an assignment or transmission shall not be deemed to be invalid beneath this sub-section if the exclusive rights subsisting as a result thence within the persons involved severally area unit, having relevance limitations obligatory on that, like to not be exercisable by 2 or additional of these persons in regard to merchandise to be sold, or otherwise listed in, inside the Asian nation otherwise than for export therefrom, or in regard to sensible to be exported to an equivalent market outside or in regard to services to be used at anywhere in India or anywhere outside India in regard to services on the market for acceptance in India.

On the whole, this article summarizes the assignment and transmission of a trademark under the Indian Trade Mark Act of 1999 .

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