Every time you think of a product, you automatically think of the company associated with the product. You remember the brand, the logo, the color and theme of the brand, as well as the jingles and advertisements that you might have seen for the concerned product. Such things become a vital part of any company/product’s identity and must be trademarked to avoid any other company/product from taking advantage of the goodwill it has gained in the market.
In India, there are several types of trademarks under which owners can get legal rights to the unique aspects of their business along with protection from anyone that might try to replicate their ideas. Dive in to learn more about trademarks, the different types available, and the intricate details of trademark assignment and transmission.
What is a Trademark?
Simply put, a trademark is a mark that helps recognize a product and distinguish it from other goods and services that belong to the same category. It is a brand identifier that people associate with a company and becomes the aspect through which people majorly identify the product.
Why do you need a Trademark?
A trademark protects the owner’s rights to certain aspects of a product/service, prevents unauthorized usage and helps a brand gain reputation in the market over time.
Types of Trademarks
A trademark must be unique and distinctive in order to seek protection of rights under the Trademark Act, 1999. In case your mark is similar to some other brands in the market, it is advised to modify it a bit, so that it qualifies for trademark registration. Some different types of trademarks you may apply to register for are as follows:
- Word Mark: The trademark is registered for a certain word or text, without any stylization, font or creative changes in the design. This gives the owner the broadest trademark, as they can use this word mark in all forms of representations, irrespective of the font, form or design.
- Shape Mark: As the ‘shapes of good’ term is mentioned in the Trademark Act, 1999, shapes of products are protected under the trademark as well. For example, Toblerone has trademarked their chocolate design, ensuring no other product can use their unique product design.
Limitation to Shape Marks: A shape cannot be trademarked if:
- the shape results from the nature of the goods,
- the shape adds significant value to the products,
- the shape is necessary to obtain a technical result.
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- Device Mark: Such marks often include a word mark along with some other design elements. While the entire design shared is trademarked, the individual elements of the design are not protected by the same trademark.
| If you register a colored design, it shall be trademarked in that specific color tone. However, if you register the same design in black and white, the trademark offers a broader protection, and allows you to claim protection for the design in other colors as well. |
- Collective Mark: Unlike other trademarks, a collective mark is used by an organization or an association of members to distinguish their products and services from that of non-members.
- Series Mark: When an owner trademarks a series of products/services that have some resemblance to one another, such trademarks can be registered as series marks.
- Certification Mark: Such marks are usually registered to certify the origin, quality, material, mode of manufacture, performance of services, and other aspects of products/services. Any product that they are applied on can be identified as it being verified and certified by the owner of the trademark. For example, the AGMARK or the Agricultural Mark on any product means that it meets the standards approved by the Directorate of Marketing and Inspection.
What is Trademark Assignment?
Assignment of a trademark refers to the transfer of the owner’s rights in a trademark to another. This includes the transference of rights, interests, title, and benefits from the owner, also known as assignor, to another individual, also known as the assignee.
As stated in Section 2 (1)(b) of the Trademark Act, 1999, assignment refers to the assignment of a trademark in writing by the act of the concerned parties. Both registered and unregistered trademarks can be assigned with or without the goodwill of the business.
What is Trademark Transmission?
Transmission of a trademark refers to the transfer of the rights of a trademark through legal proceedings from the assignor to the assignee. This means the rights of the trademark have been transferred due to some legal reasons or by the legal representatives of the owner after their death. Any mode of transfer that is not an assignment is referred to as transmission. This transfer can be for some of the trademarks or for all the trademarks in the series mark, with or without the goodwill of the business concerned.
Benefits of Trademark Assignment
Some key benefits of trademark assignment are:
- Allows the trademark holder to encash the value of their brand.
- Supports the assignor and the assignee to expand their businesses.
- Helps the assignor obtain rights to an already established brand.
- Helps the assignor and assignee establish their legal rights in case of a dispute.
Trademark Assignment Agreement: Key Clauses
The trademark owner usually assigns it to the assignee through a trademark assignment agreement. A few points that must be kept in mind when drafting a trademark assignment agreement are:
- The rights of the trademark should not be potentially harmed by the clauses mentioned in the Agreement.
- It should be mentioned whether the assignment is with or without the goodwill of the business.
- The geographical scope of the location where the assignee will hold the values and rights should be clearly mentioned.
- It should state whether it would or would not bind legal heirs of the assignor and assignee.
- The transfer of the right to sue and collect future and past infringements must be stated.
- It should have a clear objective of the transaction.
- It must be properly processed, i.e., it must be stamped and notarized as per the applicable standards.
- Signatures and witnesses as well as date and place of the agreement execution must be stated.
- Date and day of the assignment along with the parties involved must be mentioned.
Trademark Assignment Agreement Process
- The owner of the trademark assigns their rights in the trademark to the assignee through a trademark assignment agreement.
- The assignor, assignee or both can then make a request to the Registrar by filing an application of trademark assignment by filing Form TM-P.
- The TM-P form must be submitted within six months of assignment agreement. It can be filed after six months of assignment as well, but the fee may vary.
- The assignment must be advertised as per and within the period specified by the Registrar.
- A copy of the advertisement and Registrar’s directions should be submitted to the Registrar upon completion.
- After receiving the Form TM-P, the necessary documents, and the copy of the advertisement and the directions issued, the Registrar will acknowledge the assignment by registering the assignee as the new proprietor and noting down the specifications of the assignment agreement.
Documents Required for Trademark Assignment
For trademark assignment, the following documents must be submitted to the Registrar along with Form TM-P:
- Trademark assignment agreement,
- NOC from the trademark assignor,
- Documents for the identification of the assignor and the assignee.
Conclusion
Trademark in an intellectual property that has gained significant value and plays a vital role in building a brand’s identity. It is vital to understanding the intricacies of trademarks and the protection it offers along with how the assignment and transmission processes work, as any error in the process will make you go through the entire process again.
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