A trademark is intellectual property, and the owner has the same rights as other types of assets, such as the ability to sell, license, or transfer their intellectual property. Trademark licensing and assignment are covered by the Trademark Act of 1999. A trademark transfer or allocation is the process of legally transferring the trademark title from the primary owner, also known as the assignor, to the recipient, also known as the assignee. The assignor, like any other owner of property or assets, has the right to sell, license, or transfer the trademark. Trademarks can be transferred using the Trademark Assignment Agreement or Trademark Licensing. The process of changing registered trademark ownership is referred to as the trademark assignment.
To transfer ownership of a registered trademark to a third party, the assignor must first create and file a Trademark Assignment Agreement with the appropriate authorities. Before the assignment process can begin, the agreement must be submitted. However, this does not preclude a third party from using a registered trademark of a well-known company. When a trademark is assigned, ownership of the registered brand changes. When Trademark Registration is done, the original owner retains ownership and only a limited set of rights are granted to the third party. The business goodwill may or may not be transferred as part of this assignment. The assignment must be recorded in the trademark register if the trademark is registered. A trademark can be transferred between two people through deeds, agreements, and so on. It is usually a one-time payment. An assignment deed is a common name for such trademark assignment/ agreement. In both cases, whether registered or unregistered, the assignee must apply to the Registrar within six months.
Different Types of Trademark assignment
In India, various types of Trademark Assignment are accepted. The parties would be classified according to their needs and requirements, and the Trademark Assignment agreement would be drafted accordingly. The following are the various types of trademark assignments in India:
- Complete Assignment: As a result of this assignment, the assignee becomes the sole owner of the trademark, and the assignor loses all ownership interests in it. In other words, the assignor transfers the assignee's entire ownership of the registered trademark to the assignee.
- Specific or Partial Assignment: A specific assignment occurs when the agreement only grants certain unique rights to use the trademark. A partial assignment occurs when the agreement only grants certain unique rights to use the trademark. In other words, the assignor simply transfers a portion of ownership of specific goods and services.
- Assignment of trademark with goodwill: In an "assignment with Goodwill," the assignor transfers both the rights to the trademark and its value or goodwill to the assignee. The goodwill figure will be calculated individually in the agreement.
For example, suppose Mr. X owns a trademark "TM" and is already using it in relation to clothing and footwear. Mr. X assigns the said trademark "TM" to Mr. Y via an agreement (in writing) in relation to clothing and footwear, as well as the Goodwill associated with the trademark "TM".
In this case, Mr. X has also assigned to Mr. Y the Goodwill associated with the trademark "TM" for the clothing and footwear business, as well as for other goods or services. As a result, Mr. Y is authorised to use the trademark "TM" for clothing and footwear, as well as other goods or services.
Assignment of trademark without goodwill: A gross agreement occurs when only the ownership or rights are transferred while the assignor retains the goodwill. The assignor will limit the buyer's rights while transferring the trademark in this type of trademark assignment. In this case, the assignor prohibits the purchaser from using the product's brand, which the assignor already owns; in other words, the goodwill associated with the brand is not transferred to the assignee.
For example, suppose Mr. X owns a trademark "TM" and is already using it in relation to clothing and footwear. Mr. X assigns the said trademark "TM" to Mr. Y through a written agreement in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with the trademark "TM".
In this case, Mr. X has not assigned to Mr. Y the Goodwill associated with the trademark "TM" for the clothing and footwear business. As a result, Mr. Y is ineligible to use the aforementioned trademark "TM" for clothing and footwear. As a result, if Mr. Y wishes to use the said trademark "TM" in relation to other goods or services, he must create separate Goodwill for trademark "TM" for such other goods or services.
Documents Required for Trademark Assignment
The following documents are necessary for Trademark Assignment Procedure in India:
-
Certificate of Trademark registration
-
Particulars (Identity and address proof) of the assignor and assignee
-
NOC from the original owner of the registered trademark
-
Description of trademark assignment with or without goodwill
-
Copy of advertisement along with a Registrar’s direction
-
Signatories of Trademarks and Witness
-
Notarization / Oath Commissioner
-
Proof of Execution date and place
-
Power of Attorney/ Authorisation Letter
-
Any other documents as may be required
Procedure for Trademark Assignment
- The application for such a process should include all transfer details in form TM-P.
- Following the completion of the application, it must be filed with the Trademark Registrar.
- This must be completed within 6 months of acquiring the proprietorship.
- The Registrar must specify the manner in which the trademark assignment will be advertised.
- A copy of the trademark assignment advertisement, as well as a copy of the Registrar's direction on it, should be submitted.
Features
- Valuation of Trademark: When a brand is created, it takes a lot of money, time, and effort. Thus, through the process of assigning a trademark to a third party, the owners or authors of the trademark can receive the value of the trademark in cash.
- Trademark Assignment Agreement is a valid proof: In the event of a situation or dispute involving the assignment of a trademark, a trademark assignment agreement can serve as valid proof or evidence. Such assignment agreements effectively protect the author's or trademark owner's legal rights.
- Already established brand: The author of a trademark benefits from dealing with an already existing trademark.
- Monetization Of Brand: Monetize the value of your trademark and reap the benefits of your time and investment in developing the brand.
- Easy Brand Building: The assignee benefits as well because he or she does not have to work on brand building.
- Protection of Intellectual Property: Trademark assignment aids in the preservation of intellectual property by preserving registrations of the same.
Criteria to effect valid assignment agreement
The following points are to be meet in order to make the assignment agreement duly valid.
-
The agreement ought to bein writing.
-
The agreement should be find out the oarties as assignor and assignee.
-
The trademark which is recognised has to be assigned with applicable application and registration.
-
The agreement must be given for sometime in return, i.e., for consideration.
-
The agreement should find out the sate of the agreement.
-
The agreement must be executed appropriately.
-
The agreement should include the alienation of trademark in goodwill.
Categories of Trademark Assignment
The Following are the kinds of Trademark Assignment
Complete Assignment depicts the transfer of full rights by the owner in respect of the registered trademark to the second party. Here the second party is engulfed with all rights which include rights to the furtherance of transfer in order to earn royalties.
Partial Assignment involves alienation of ownership to a certain extent only. It is restricted to certain products or services as parties are determined or showed interest in the trademark assignment agreement.
Assignment with goodwill is made when both the values and rights associates with the trademark are alienated to the third party with goodwill.
- Assignment without Goodwill
Assignment with goodwill is otherwise called Gross Assignment. In this agreement the owner if the brand will restrain the rights of the buyer to some extent. The buyer is prevented from using the brand for such product which the original proprietor used. Therefore the goodwill adhered to the brand in respect to the goods already bring used such specified brand will not alienated to the buyer.
Our Support
How can Compliance Calendar LLP assist in the Trademark Assignment?
We have a team of Trademark Agents/ Attorneys who will first have a discovery call with you to understand your requirement of trademark assignments and accordingly will help you right from the drafting and vetting of trademark assignment deed to filing with the Dept. If you have any questions, you may reach out at info@ccoffice.in or connect at 9988424211.
Compliance Calendar ®