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Typically only the party assigning the intellectual property must sign the assignment, and while notarization is strongly preferred it is not strictly required. Once as assignment has been executed, it should be recorded.
The Act allows a registered proprietor to assign or license out the use of his trademark. The assignment and licensing can be made with or without the goodwill of the business concerned. A trademark need not be registered to be assigned or licensed.
In a Trademark licence agreement the proprietor (Licensor) of a registered trademark gives authorization to another company (Licensee) to manufacture and distribute products under this trademark.
There is no proscribed form for the assignment, but by statute it must be in writing and duly executed. The assignment will be checked for accuracy by the United States Patent and Trademark Office (PTO) so make sure the information in the application matches the assignment document.
Trademark Assignment Agreement is the transfer of a Trademark owner's rights, title or name, and interest in service mark/Trademark. The transferring party or assignor transfer property rights in the mark to the receiving party called the assignee.
By law, a trademark owner may transfer or sell his or her property rights to another through a legal document referred to as an assignment. An assignment is generally a written agreement in which the two parties have negotiated and agreed to a price. To be valid, the assignment must be signed by both parties.
To put it summarily, in case of an assignment of a trademark, there is a change in the ownership of the registered brand and in case of licensing, the right in the trade mark continues to vest with the original owner but only few restricted rights to use the brand/mark are given to the third party.
Instead, a trademark must be assigned through an Assignment of Rights. That Assignment must transfer not only the trademark and the registration, but must also transfer the goodwill behind the trademark to be valid.
A trademark licence is an agreement between a trademark owner (the licensor) and another entity (the licensee) in which the licensor permits the licensee to use its trademark for commercial purposes.
Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.