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 brand 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

Conclusion

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.