Assignment is a voluntary and contractual transfer, whereby the owner of a trademark executes a written agreement to transfer ownership to another person or entity, either wholly or partially, and with or without the goodwill of the business. In contrast,
Transmission is an involuntary transfer that occurs by operation of law, without the need for any agreement between parties. Transmission usually arises in circumstances such as succession on death, inheritance, bankruptcy, or devolution of property, where the rights in the trademark automatically vest in another person. Thus, while assignment requires a formal deed and consideration between assignor and assignee, transmission does not; it flows naturally from legal events.
The difference between the two (2) Assignment and Transmission of a trademark lies in the manner through which the rights are transferred from one party to the other.
Under both Tanzanian and Zanzibar trademark laws, allow the assignment or transmission of trademarks, allowing the owner to transfer ownership either fully or partially. This assignment may apply to the entire trademark or only to specific goods or services covered by its registration. A crucial requirement in this process is registering the assignment with the Trademark Office. Failure to do so renders the transfer legally invalid.
Once the assignment or transmission is finalized, the new trademark holder must apply to the Trademark Office to have their ownership officially recorded. This ensures legal recognition and protects the new owner’s rights over the trademark. Additionally, any restrictions or conditions attached to the assignment, such as territorial limitations or specific usage rights, must be clearly outlined in the transfer agreement to avoid disputes.
Failure to comply with these formalities may lead to complications, including challenges to ownership or difficulties in enforcing trademark rights. Therefore, it is essential for both parties to adhere to the legal requirements and ensure that all necessary documentation is properly filed and approved.
The application for recording must follow the prescribed procedures, and the key documents required include:
- The assignment document or confirmatory deed of assignment, signed by both the assignor (current owner) and the assignee (new owner). A simple copy of the document is typically sufficient.
- A power of attorney (POA) to authorize the filing of the application.
- Payment of the applicable official fees.
- If the assignment is based on a priority claim, evidence supporting the assignment of the priority claim must be provided
To ensure a smooth transition, both parties should comply with all procedural requirements and submit accurate documentation to the Trademark Office. Properly executed assignments not only protect the interests of the new owner but also maintain the integrity of the trademark register, preventing legal uncertainties in the future.
Timely registration is essential to prevent potential disputes or conflicting claims over ownership. Until the assignment is officially recorded, Once the application is submitted, the Trademark Office records the details of the assignment or transfer in the trademark register. If the assignment involves a pending trademark application, the transfer will be provisionally noted and formally registered once the trademark is granted. third parties may continue to recognize the previous owner as the rightful holder of the trademark. Additionally, failure to register the transfer promptly may affect the new owner’s ability to license the trademark, take legal action against infringement, or assert exclusive rights over its use, since it is crucial to understand that the assignment or transfer for it to have legal effect against third parties is until it is officially recorded. This means the new owner cannot enforce their trademark rights against others until the transfer is publicly registered.
And if the trademark is assigned or transmitted while the trademark application is still pending, the assignment or transmission will only take effect once the trademark is formally registered. Furthermore, assignments and transmissions must not result in confusion or deception about the goods or services associated with the trademark. If an assignment is likely to mislead the public regarding the origin, nature, manufacturing process, characteristics, or suitability of the goods or services, the assignment will be deemed invalid.
CONCLUSION.
In summary, assignment and transmission of trademarks in Tanzania involve a number of procedural and legal requirements designed to ensure transparency, maintain control over the quality of goods or services, and protect the interests of both the registered proprietor and the public. In granting a of transferring ownership, it is crucial that all actions comply with the established legal frameworks to ensure the trademark remains enforceable and protected.
The Author
The Author Roman MBowe is a Legal Intern with the firm. He can be reached at ip@rive.co.tz
Disclaimer
This article is for general informational purposes only and does not constitute legal advice. The content is a summary of the draft guidelines and should not be relied upon as a substitute for professional legal counsel. Clients should consult with a qualified legal professional to understand how these guidelines specifically apply to their business operations. RIVE& Co. disclaims all liability for any actions taken or not taken based on this information.