Assignment in IP

 

Both context & concept of Assignment in IP differs as explained:

G.I. - > Herein, any right acquired via registration isn’t a subject matter of assignment (S.24) whereas right of any authorized user (as explained in previous blog) would be passed via succession only.

TM -> An assignment for registered TM can be with or without goodwill, for whole or restricted goods or services. And yes, unregistered marks too are assignable or transferable, as IP is prime facie. A glitch is that it shouldn’t create multiple exclusive right holders (assignees with exclusive rights for similar goods/services). Further, associated marks (i.e. separate marks all together that depends on any primary registration) should be assigned as whole. Furthermore, transmission may not be same as assignment (eg. transfer by operation of law), whereas, assignment is rights & obligations transferred in writing by rightful owner to assignee. Such details may also be found in the PR history. Also, certification TMs are not assignable or transferrable.

Copyright -> Assignment can be made partially or wholly, in past, present or prospective works subject to, that assignment should be effective for the existing work only or whenever that work would come into existence, further, applicable only for those medium or mode (eg. digital, publishing) which at any point of time in commercial use, unless, mentioned in assignment specifically for any prospective medium or mode, yet to come. It is further to be noted that authors of musical /literary work that’s included in cinematographic film couldn’t assign/waive rights for compensations on equal basis (50:50), other than communication of work to public. Also, such assignment/agreement shouldn’t be contrary to what executed with any copyright society (when being an existing member) for collection of dues, as that stands void. The same applies to sound recording which when doesn’t form part of the cinematographic film. Furthermore, the assignment / agreement must mention:

• Duration (if not mentioned then five years) & Territorial extent (if not mentioned then within domestic boundaries);
• Amount of royalty/compensation.

The moral rights of the performer have already been explained in one of the previous blogs (eg. right against distortion, mutilation etc. or anything that affects repute of original author), which are covered despite of the fact that the rights have already been assigned.

Patent -> It’s straight forward. Assign (in writing, embodying terms & conditions & obligations) the patent rights & Assignee registers it in patent offices. There’s difference between assignment & licensing, which one must be aware of. Further, a licensee has rights alike of patentee to initiate action against infringement. And if the patentee (holder of patent) hasn’t joined in such initiation, it would become one of the defendants (without liability), unless, it takes part in the proceedings. Furthermore, compulsory licenses are different, which are filed after three years from the grant of patent on the grounds mentioned in S.84(1) as already explained in earlier blogs.

Design -> Same as Patent. Further, such assignment or license should be in writing embodying all terms & conditions & obligations of rights of all parties and furthermore should be filed within the period of six months on record from its execution, or, may be termed invalid.

REPEAT: IP is Necessary to Establish the Identity of the Original inventor / author / producer / designer / proprietor of goods & services. BUT yes, it should Not become tools of Exploitation, as elucidated in some of my previous blogs with reasons & examples. 😊

© Pranav Chaturvedi