What is Trademark Assignment Overview
Trademark is an intellectual property and like any other asset, the owner of a trademark has the right to sell, license or transfer the owned intellectual property. Such a transfer can be made through Trademark Assignment Agreement or through Licensing.
A trademark assignment is a transfer of an owner's rights, title, and interest in a trademark or service mark. The transferring party (“assignor”) transfers to the receiving party (“assignee”) its property rights in the mark.
When a trademark is assigned, there is a change in the ownership of the registered brand. But when it’s licensed, the rights in the trademark continue to vest with the original owner but only a few restricted rights are given to the third party. This assignment can be made with or without transferring the business goodwill. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.
Types of Trademark Assignment
All the rights vested in the trademark are assigned to the third party, including the rights to further transfer, to earn royalties, to license, etc.
Assignment limited to only some goods/ services
In this assignment, the transfer of ownership is restricted only to certain products/services as decided in the Trademark Assignment Agreement.
In this case, the value and the rights attached to the trademark are also transferred. This makes new owner of the trademark eligible to use the assigned brand name with respect to the products and services already sold under the brand name. Also, it grants permission to use the acquired trademark for any new venture or product the new owner creates or manufactures.
Also known as Gross Assignment, here the brand owner restricts the rights of the assignee, limiting user rights of the new assignee and prohibiting him/her from using the brand name for the products already in use by the assignor. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand is not transferred to the buyer.
Process for Trademark Assignment
01
DAY 1-2 - Collection
- Discussion and collection of basic Information
- Provide required documents
- Finalize the terms and conditions
- Finalize the type of agreement
02
DAY 3-5 - Execution
- Drafting of Documents by Professionals
- Drafting of Trademark Assignment Agreement
03
Day 6-7 - Submission
- Filing of online TM-P application
Documents Required For Trademark Assignment
- TM Certificate: Certificate of Trademark Registration (if any)
- Details of the Party: Name and description of the assignor and assignee
- NOC: No Objection Certificate from the original owner of the registered trademark
Benefits Of Trademark Assignment
- Get your trademark's value
- Assignment Agreement is Valid Proof
- Pre-established brand name
- Expansion of business
FAQs On Trademark Assignment
The trademark assignment agreement in India referred to as the Trademark Assignment Document, is entered between the parties being Assignor and Assignee. Once the Trademark Agreement is duly executed, an online trademark assignment procedure is to be followed. This application is filed with the Registry in the prescribed form with the help of registered Trademark Attorney along with the payment of prescribed fee.
Trademarks, like any other asset, can be transferred from one owner to another. Such transfers can take place in the form of an assignment, or merger or amalgamation between two entities. Yes, an unregistered trademark can also be assigned, with or without goodwill by filing an application with the registry.
Like any Agreement, the Deed of Trademark Assignment shall be executed after paying the Stamp Duty of as per the prescribed rates by the concerned State Government. The rate of stamp duty shall be calculated on the basis of the consideration agreed by the Parties. In addition to same, the effective date of Assignment shall be expressly provided.
The Trademark Registry in India normally takes up to 6 to 8 months to update the data of the transfer. However, where the effective date of transfer is expressly provided in the Trademark Assignment Document i.e. Assignment Deed, the conferred rights are enjoyed by the Transferee from the said date.
A registry has prescribed Rs 9,000/- as a fee payable for application of transfer Trademark ownership i.e. Trademark Assignment in India.
The owner of the Trademark can provide rights of using the Trademark without transfer of ownership. This is called Partial transfer of Trademark or Licensing of Trademark in India. To affect the said transfer of rights, an Agreement is to be executed by providing all the terms and conditions along with covenants as agreed by the Parties.
The licensing of the assignment is voluntary. But it is advisable to get the trademark licensed as it has many merits to it and acts as valid proof to the assignment.
A valid identity proof of both parties, a copy of the assignment agreement and a filled form TM-P of Trademarks Act 1999 must be produced along with fee payment.
A person can just merely create an assignment agreement for the transfer of rights or get it licensed through registrar by applying for licensing. The latter one is more advisable as it creates a protective shield to the assignee.
An application must be made to the registrar within 6 months from the date of making an agreement. But the extension of the time period is under the discretion of the registrar.
