- Assignment of Trademark
Assignment of a trademark ensues when the proprietorship of a trademark is conveyed from one party to another whether along with or deprived of the goodwill of the business. In case of a registered Trademark, assignment should be recorded in the Register of Trademarks.
To assign a trademark in Sri Lanka the following points should be reckoned with:
- A deed of assignment should be executed between the assignor and the assignee
- The deed of assignment should be notarized. However, legalization is not required
- The deed of assignment should bear the rubber seal/ corporate seal of the assignor and the assignee
- The assignor and the assignee should both submit their respective Powers of Attorney and bear the rubber seal/corporate seal.
- Licensing of a Trademark
Licensing is a means to economically exploit a trademark. Licensing is authorizing the use of the concerned trademark by another party and rights in relation thereto. The license to a mark is granted to allow licensees to use the mark without assigning the ownership of the mark per se and a license can be facilitated for all or some of the goods and services covered under the registered mark.
Trademark licensing is advantageous to both, the licensor and the licensee. While the licensor enjoys its rights to the mark by getting the royalties for its use, the licensee is able to expand its market operations by using the brand and developing its reputation.
To License a trademark in Sri Lanka the following points should be reckoned with:
- A License contract should be executed between the licensor and the licensee
- The License contract should be notarized. However, legalization is not required
- The License contract should bear the rubber seal/ corporate seal of the licensor and the licensee
- The licensor and the licensee should both submit their Power of Attorney
- The power of attorney shall bear the rubber seal/ corporate seal of the licensor and the licensee.
- A license contract could either wholly or severally be rendered invalid / null and void in the following circumstances:-
- Absence of stipulations regarding quality considerations of the goods and services for which the trademark is used.
- Any clause which might affect the rights of the owner of the mark.