Like every other asset, trademark can also be transferred from one owner to the other. Temporary transfer of trademark is referred to as Licensing and permanent transfer is termed as Trademark assignment in India. In trademark assignment, the owner of the mark would transfer the ownership with or without the goodwill of the business.
Complete Assignment of Trademarks
In the complete assignment of trademarks, the assignor (transferring party) transfers all rights on the trademark to the assignee (receiving party). Upon assignment, the assignee becomes the sole owner with all rights to trade, market, including the rights to transfer the trademark to another entity.
Partial Assignment of Trademarks
In the partial assignment, the transfer of ownership will be restricted only to those products and/or services that are mentioned in the Trademark Assignment Agreement. For instance, if the assignor, owner of products A and B, transfers the proprietary rights only of A to the assignee and retains that of B, it is called partial assignment.
Assignment With Goodwill
In this trademark assignment in India, both the rights and goodwill associated with the product will be transferred to the assignee. For instance, when assignor assigns trademark with goodwill, the assignee has all the rights to use the goodwill to promote both similar and/or dissimilar products/services as per his choice.
Assignment Without Goodwill
In assignment without goodwill, the assignee will not have the rights to use goodwill for the products/services that are similar to the ones being sold by the assignor. However, the assignee can use the goodwill to brand products/services different from that of the assignor. In short, both assignee and assignor can collectively use the same trademarks provided their products/services are dissimilar.
Assignment of An Unregistered Mark
According to Section 39, an unregistered trademark can be transmitted or assigned without or with the goodwill of the concerned business. A Form TM-M has to be submitted at the registry to record transfer or assignment of the unregistered trademark.
Assignment of Registered Trademark
According to Section 38, a registered trademark can either be assigned as partial or full, without or with the goodwill of the concerned business. The assignment of trademark from the assignor to assignee must be registered at the Registrar of Trademark through Form P of Trademarks.