TRANSFER OF TRADE MARK

• The intellectual property rights assignment is a transfer of the rights of the owner, title and the interest in certain intellectual property. 
• The party transferring the rights are called assignor and the party receiving the rights are called assignee.
• The assignor transfers to the assignee its property in intellectual property rights such as trademarks, patents etc. 
• The owner of the rights may transfer all of his rights or part of his rights. Like the copyright owner could assign only some of his economic rights.
• The license agreements, grants permissions to use the intellectual property rights under certain conditions.
• Likely, the general rule assignments are transfers of property rights without any condition under which rights will be used. 
• An intellectual property assignment agreement is a contract to transfer intellectual property ownership from assignor to assignee.
• It empowers the assignor to permanently consign all of his intellectual property rights to the willing candidate in exchange for a defined amount. 
• This agreement makes the owner sell his rights similarly as he could sell a physical property marking a permanent transfer.
• It means he will no longer hold any control, involvement, or claim on the transferred rights. Section 37 of the Trademark Act, 1999 recognizes the right of registered proprietor to assign the trademark for any consideration and to give receipt. 
• It provides that subject to the provisions of the act and to any right appearing from the register to be vested in any other person, the proprietor of a trademark has the power to assign the trademark and to give effectual receipt for any consideration for such assignment. It is a settled principle that the assignor cannot possibly transfer more rights to the assignee that what he himself has. 
• A registered trademark is only assignable, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of the trademark which is registered for those goods or service. 
• Section 2(1)(b) of the Trademark Act,1999 defines the “assignment” to mean “an assignment in writing by act of the parties concerned”. 
• In view of this definition, an assignment has to be in writing and by the act of the parties concerned. Both the assignor and the assignee must execute the document. Such document will be known as the assignment agreement. 
• There cannot be a unilateral execution of document by one party alone.