Trademarks are graphical marks that are capable of distinguishing the products or services of one individual from those of others, as defined by the Trademarks Act, 1999. These trademarks can include the shape and packaging of goods, as well as the combination of colours.

It is possible to claim trademark protection over a symbol, logo, slogan, or phrase, but only when it is attached to a product or service sold in commerce.

The trademark assignment is considered an asset and can therefore be transferred from one person to another. It can be assigned to another as a permanent process, while it can be licensed as a temporary process. Assignors transfer ownership rights to assignees, as assignees they acquire ownership rights.

Assignment and transmission of trademarks are governed by the Trademarks Act, 1999.

The TRADEMARK REGISTRY will keep the register of trademarks at its headquarters, where registered trademarks will be entered with the following information:

i) Names

ii) Addresses

iii) Description of proprietor/ proprietors

iv) Notification of assignment

v) Descriptions of the registered users and

vi) Limitations as prescribed

TM denotes a trademark registered in India, and ® indicates a trademark which is not registered. Similar trademarks are prohibited in India because they may cause consumer confusion.

Trademarks Act, 1999 states that a trademark cannot be assigned to someone or a company if it closely resembles or is of the same nature, if the goods or services offered are similar or if their descriptions are similar or if they have some similar structures.

Trademark assignment methods

There are two types of trademark assignments:

• A trademark assignment that involves transfer of all rights and interests of the trademark owner to the assignee allows the latter to claim full ownership of the mark.

• Assigning some trademarks to specific products or services is known as a partial assignment. 

• An assignee may use a trademark independently of the product which the assignor uses, even if the trademark has no goodwill accumulating. The assignee can use the trademark independently of the product which the assignor uses.

• Assigning an unregistered mark: A trademark may be assigned under the Trademarks Act, 1999 with or without goodwill attached to the assignment.

• According to the Trademarks Act, 1999, you must make an application for the assignment of a registered mark, including your name, your residence, the date of acquisition, and the details of the assignment instrument. As a final note, I acknowledge that to the best of my knowledge all the facts and matters mentioned above are accurate.

Assignment deed:

• It is important to carefully draft the assignment deed,

• Names of both assignors and assignees will appear on the deed,

• Assignors must indicate in their deed of assignment the mark which they intend to assign,

• Assignors are required to confirm that no legal disputes are pending with regard to trademarks,

• This assignment will involve a transmission of funds outside India, both assignor and assignee will confirm this,

• In the end, the assignee of the deed will sign the deed in order to effect its registration.

• It is necessary to mention the date on which the deed was entered into, and

• The trademark registry must be notified of the change of ownership once the trademark has been assigned.