Joint trademark ownership and how such a trademark could be transferred or assigned

Joint ownership of a trademark is when two or more parties, whether natural persons, legal persons, or other organizations jointly own the rights to possess, use, benefit from, and dispose of the same registered trademark. These rights can be exercised jointly by joint owners or severally. However, any several use should not prevent the use of such rights by any other joint owner or owners.

The filing of a jointly owned trademark is the same as filing a regular trademark and follows the same procedures, with the difference being that the application is to be filed in the name of the joint owners of the trademark. It is permissible that joint owners hail from different jurisdictions.

Together, the joint owners can sell/license/assign the mark to a new party that may be interested to carry out business under the trade-name. A joint owner may only license or assign his rights to a new party with the consent of all the other joint owners. If a joint owner gives up his right, the right so given up will be enjoyed by the other joint owner or owners.

In a case of dissolution of the jointly owned trademark, each joint owner of the mark, shall not be eligible to use the mark any further on a several basis; the complete bundle of rights shall be dissolved instantly and shall not be available for single-use.

Neither of the owners shall be said to be the absolute owner of the mark except if the joint owners of the trademark all together agree to transfer the rights (through assignment) to either of them, to carry forward the business independently under the same joint trade-name.

No individual owner of the mark shall be allowed to use the mark or any related mark either severally or in association unless a clear permission has been given by all the joint owners of the earlier mark. Also, neither of the party shall be severally allowed to take any credit for the mark or the goodwill or revenue generated by the use of the jointly owned trademark.

For more information please contact our Trademarks Department

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