Assignment of a trademark is the process by which the owner of a trademark transfers ownership rights over it to another party. The transfer of rights may be made for consideration (against a price), free of charge, or by donation or will. This process may involve the assignment of the trade mark in its entirety or may be carried out in part, affecting only certain classes of goods or services for which the mark is registered.
Short history
Initially, brands were closely associated with commercial origins and product quality according to modern regulations. The original idea was that a trade mark could not be transferred separately and had to be linked to goodwill or the entire assets of the trader, according to the principle of trade mark connection. This principle persisted even after the main function of the brand became the guarantee of quality. However, the restriction proved ineffective and even harmful, allowing circumvention by renouncing the trademark and subsequent registration. With the increase in the value of the trademark, several legislations, including the one in Romania, have adopted the principle of free assignment of the trademark, allowing its transmission independently of goodwill. Thus, at present, Romanian legislation expressly enshrines the principle of trademark transferability, regardless of goodwill.
General
Article 47(2) of Law No 84/1998 on trademarks and geographical indications brings important clarifications on the possibility of transferring trademark rights by assignment, offering flexibility to the parties involved in this process: “the transfer by assignment of trademark rights may be made for all or part of the goods or services for which the trademark is registered.”
Brand assignment is an important tool in the business world, allowing companies to leverage their intangible brand asset for financial or strategic purposes. When a trade mark is assigned, the new proprietor acquires exclusive rights to that trade mark and may use the symbols and distinguishing signs associated with it in connection with his goods or services.
Partial assignment
An interesting situation arises when talking about partial assignment of the trademark, where not all classes of goods or services for which the trademark is registered are transferred. This type of divestment can take place in various contexts, such as restructuring a company or focusing on specific product lines.
The partial assignment of the trade mark can bring significant benefits for both the assignor (the transferor) and the assignee (the new proprietor). Through the selective transfer of rights, the assignor retains control of other classes of goods or services, while the assignee enjoys exclusive rights over the selected categories.
Suppose a company, called XYZ Apparel, owns a trademark for “XYZ” covering both clothing (Class 25) and perfumery and cosmetics (Class 3). The company decides to make a partial divestment of the brand in order to focus more effectively on its core activities.
XYZ Apparel decides to partially assign trademark rights for perfumery and cosmetics products to ABC Beauty, a company specializing in premium cosmetics. Through this partial assignment, XYZ Apparel still retains the rights to the “XYZ” brand in respect of clothing, but ABC Beauty obtains the exclusive rights to use the same brand in the promotion and marketing of their cosmetic products.
Thus, the assignor (XYZ Apparel) initially had rights to both classes (Class 25 and Class 3), and by partial assignment, transfers only the rights for Class 3 to the assignee (ABC Beauty), while still maintaining its rights for Class 25. This example illustrates how a company can manage its brand portfolio, making a partial divestment to specialize or allowing other companies to leverage brands in specific areas.
Conclusions
In conclusion, brand assignment is an essential tool in managing and capitalizing on a company’s intangible assets. Offering flexibility through the possibility of partial assignment, EU legislation reflects the modern approach to the transmission of trademark rights. This strategic process not only facilitates restructuring and specialization, but also stimulates innovation and collaboration between entities, thus reinforcing the importance of brands in the contemporary economy.
If you want to benefit from specialized assistance in drafting the trademark assignment contract and carrying out the transfer steps to EUIPO, Tas Agency is available at the phone number: 0745160163 or at the e-mail address: office@agentiatas.ro.
