Trademark Assignment

Types of Trademark Assignment

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Complete Assignment

In complete assignment, all rights to the registered trademark are transferred by the assignor to the assignee.

Partial Assignment

In partial assignment, the person giving away the trademark only transfers a limited portion of the ownership with respect to certain goods or services.

An assignment with Goodwill

When an assignment includes goodwill, the assignor also transfers the value and reputation of the trademark to the assignee.

An assignment without Goodwill

In an assignment without goodwill, the assignor restricts the buyer’s rights and does not transfer the reputation or value of the brand to the assignee. The assignor continues to use the brand and the assignee is not allowed to use it.

Conditions for Trademark Assignment

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• The process of transferring a trademark ownership should be recorded in writing.
• The assignment should occur between two identified parties, with the current owner of the trademark (assignor) transferring ownership to the buyer (assignee).
• The assignor must willingly agree to the assignment and it should be done for a fair and reasonable compensation.

Trademark Assignment Agreement (Assignment Deed)

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The trademark owner typically assigns it to another party through a legally binding agreement known as a trademark assignment agreement. When drafting this agreement, it is important to keep the following points in mind:

• The rights of the trademark should not be negatively impacted by any obligations outlined in the agreement.
• The agreement should clearly state whether the assignment includes or does not include the goodwill of the business.
• The purpose of the transfer should be clearly stated in the agreement.
• The agreement should specify the geographical location where the assignee will have rights to the trademark.
• The agreement should indicate whether the assignee will have the right to collect damages for past and future infringement of the trademark.
• The agreement should be legally executed, including being stamped and notarized as required by the applicable law.
• The agreement should include the signatures of the parties involved and any witnesses.
• The agreement should include the date, time and location of execution.
• The date of the assignment and the parties involved in the assignment should be mentioned.
• The agreement should specify if it will be binding on the legal heirs of the assignor and assignee.

It’s crucial to draft a comprehensive and legally binding agreement to ensure the trademark rights are transferred properly and any future disputes are avoided.

Trademark Assignment Process

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Assignment Of The Registered Trademark

The steps involved in the process of transferring ownership of a trademark in India are as follows:

1. The current owner of the trademark (assignor) assigns their rights to the trademark through a legally binding agreement known as a trademark assignment agreement, to the new owner (assignee).
2. The assignor or assignee, or both, can jointly file an application to register the assignment by submitting Form TM-P to the Trademark office.
3. Form TM-P must be filed with the registrar of trademarks within six months of the date of the assignment. If the application is filed after six months, the fee may be different.
4. The assignment must be advertised in a manner and within a period as directed by the registrar of trademarks.
5. The registrar’s direction and a copy of the advertisement should be submitted to the Trademark office.
6. Upon receipt of the trademark assignment application (Form TM-P) and required documents, the registrar of trademarks will register the assignee as the new owner of the trademark and record the details of the assignment in the register.

Assignment of the Unregistered Trademark

The process for assigning an unregistered trademark in India is as follows:

1. The assignor and assignee enter into a legally binding agreement known as assignment deed, which outlines the terms and conditions of the transfer of ownership.
2. The agreement should include the details of the trademark being assigned, the date of the assignment, and the names and addresses of the assignor and assignee.
3. The agreement should be stamped and notarized as per the applicable Stamp Act.
4. The agreement should be signed by the assignor and assignee, and any witnesses.
5. The assignor must have the intent and must consent for the trademark assignment.
6. Upon receipt of the trademark assignment application (Form TM-M) and required documents, the registrar of trademarks will register the assignee as the new owner of the trademark and record the details of the assignment in the register.

It is important to follow these steps and adhere to the deadlines and requirements to ensure the trademark assignment is registered properly.

Required Documents for Assignment of Trademark

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• Trademark assignment agreement.
• Trademark certificate.
• NOC from the assignor.
• Id Proof and Address Proof of the assignor and assignee.
  

Trademark Licensing

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Trademark licensing allows someone else to use a mark without transferring ownership. This can be done for all or some of the goods and services covered under the mark. The Trademark Act does not specifically use the term “license,” instead, it uses the term “registered user.”

Both parties can benefit from trademark licensing. The licensor can earn royalties from the use of the mark and the licensee can expand its market operations by using the brand and building its reputation.

Restrictions as Per Trade Mark Act, 1999

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• Restrictions on assignments that could result in multiple people having exclusive rights to use the same mark for the same goods and services or similar goods and services that are associated with each other.
• Restrictions on assignments that would result in the mark being used by different people in different parts of the country.
• Restrictions on assignments that would result in the mark being used by different people in different parts of the country together.

Why us

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Choosing Advisource for your trademark Assignment is a smart choice for several reasons. First, our team of experienced trademark attorneys have a deep understanding of Indian trademark laws and regulations and are well-versed in the process of trademark Assignment. We can guide you through the process and provide strategic advice on how to file your trademark Assignment in a timely and efficient manner.

We take care of all the necessary paperwork and ensure a smooth process when interacting with government officials. Our assistance also includes providing clear information on the ongoing process to ensure that expectations are realistic and met.