Introduction
It is a human tendency that every time we think of a product, we also start knowing or questioning the company/brand the product is associated with. We have the theme, colours, ads around the product. This kind of a thing becomes a crucial part of a product’s identity and hence it is important to trademark it to avoid competition or any other company taking advantage of its market recognition.
There are many kinds of trademarks on which the company owners can attain legal rights on the unique propositions of their business to refrain anyone from replicating 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?
A trademark is an identity that makes it easier to acknowledge a product and differentiate from other goods and services that resonates with the same category. It is seen as a brand identifier.
Why do you need a Trademark?
This trademark is an essential thing as it protects the right of the owner around product’s aspects. It also secures the product from unauthorized usage. It helps the brand gain respect, recognition and solid reputation in the market.
Types of Trademarks
The trademark should be unique and exclusive if it is to seek rights protection under the Trademark Act, 1999. If at all your mark is on the similar lines as some other brand’s mark, then it is always best to modify a little for it to qualify for registration.
There are some different types of trademarks too that you may wish to register for:
Word Mark: This is the kind of trademark that is done for a certain word or text minus any creative alterations in design. This allows an owner to use this mark in all kinds of representations, no matter design or style.
Shape Mark: The shapes of certain products are secured under ‘shapes of good’ in the Trademark Act, 1999. Toblerone for example has trademarked the design/shape of their chocolate making sure that no other competition brand or any brand can steal their unique shape.
A shape/design cannot be trademarked if:
- The shape is a natural shape resulting from the nature of the goods,
- A significant value is added to the product because of the shape
- The shape is required to procure due to technical reasons.
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Device Mark: This kind of mark has word mark with some design element in it. The whole design is trademarked but the specific elements of the design are not secured with the same unique trademark.
| If you register a coloured 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: This kind of mark is used by associations and organizations to differentiate their services and products from non-members.
- Series Mark: When a series of products/services having similar resemblance is trademarked by the owner.
- Certification Mark: To certify the origin, quality, material, performance of service, certification mark is used. For example – the Agricultural Mark or commonly called AGMARK being on any product states that it has met the standards governed by the Directorate of Marketing & Inspection.
What is Trademark Assignment?
A trademark assignment is broadly referred to as the transfer of the rights of the owner in a trademark. This consists of transfer of rights, interests, benefits from owner or assignor to the other person called assignee.
Assignment is referred to as the assignment of trademark in writing via the concerned party’s act. Both be it registered or unregistered trademarks can be assigned with the goodwill or without the goodwill of the business.
What is Trademark Transmission?
A trademark transmission is referred to as the trademark’s rights’ transfer via legal mode from the assignor to the assignee. This signifies that the trademark rights have been transferred because of some legal reason. A transmission is known as that transfer which is not an assignment.
This can be for some of the trademarks or for all in series.
Benefits of Trademark Assignment
Some key benefits of trademark assignment are:
- It lets the trademark owner to encash the brand value.
- Backs both the assignor and assignee in business expansion.
- Lets the assignor to procure rights of an established company/brand.
- Provides legal backing to both in conflict scenarios.
Trademark Assignment Agreement: Key Clauses
There is a trademark assignment agreement involved. Some keys points to note in advance while drafting a trademark assignment agreement are:
The trademarks rights should be protected and not be harmed in any way via the clauses of the agreement.
- The geographical location of the assignee holding value and rights should be mentioned.
- It should also explicitly state if it would/would not bind legal heirs of the assignor and assignee.
- Right transfer to sue and collect infringements should be clearly mentioned.
- A clear transaction objective to be mentioned.
- The process should be clear – must be stamped and notarized following the governed standards.
- Witness, signature, date and place of agreement should be mentioned.
- Date and day of the assignment along with the parties involved must be mentioned.
Trademark Assignment Agreement Process
- The trademark owner assigns their rights to the assignee via a trademark assignment agreement.
- Both are liable to extend request to the Registrar through filing a trademark application assignment through FORM TM-P
- The TM-P form should be submitted within 6 months of assignment agreement.
- Assignment should be broadcasted within the specific period mentioned by the Registrar.
- Advertisement copy and Registrar guidelines are to be submitted to Registrar post completion.
- The necessary documents and advertisement copy and guidelines issued post receipt of FORM TM-P, will be acknowledged by the Registrar by registering the assignee and new proprietor of the assignment agreement
Documents Required for Trademark Assignment
Following documents are mandatory to be submitted with FORM TM-P:
- Trademark assignment agreement,
- NOC from the trademark assignor,
- Identification documents of assignor and assignee.
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