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The title, right, and interest in a trademark that belongs to the owner are transferred when a trademark is assigned. It occurs when the mark is transferred from one party to another as ownership, with or without the business’s goodwill.
The provisions relating to trademark assignment and transmission are found in sections 37 to 45 of the Trademarks Act, 1999, when read in conjunction with rules 68 to 79 of the trademark regulations.
How does trademark assignment work?
A trademark owner has the right to sell, license, or transfer their owned intellectual property, just like they do with any other asset. Trademark assignment is a type of intellectual property. Such a transfer may be accomplished through licensing or assignment.
There are some differences in the registered brand’s ownership when a trademark is assigned. But, when it is licensed, only a few restricted rights are transferred to the third party, and the buyer still retains ownership of the trademark’s advantages. It is possible to assign a trademark in India with or without also giving the goodwill of the company. If the trademark is registered, the assignment must be noted in the Trademark Register.
Who can transfer a trademark?
According to Section 37 of the Trade Marks Act of 1999, the trademark owner listed in the trademark register has the authority to assign their trademark and to give the effective receipt of any consideration for such an assignment.
Advantages of assigning a trademark
Owner Receives a Variety of Benefits
The trademark owner enjoys the many advantages of using an already-established trademark.
Profit from the value of your trademark and take pleasure in the results of the time and effort spent developing your brand.
Building A Brand Easily
The assignee is spared the time, labour, and expense of developing brand value. Since they are not required to build the brand, the assignee also gains from this.
A well-known company
Dealing with an existing trademark has advantages for the trademark’s creator.
Keep IPR intact
By preserving trademark registrations, trademark assignment help safeguard intellectual property.
The value of the trademark belongs to the owner.
A significant amount of money, effort, and time must be put forth when creating a brand. Consequently, the trademark assignment aids the trademark’s creator in determining the trademark’s financial worth.
Agreement to Assign a Trademark is sufficient evidence.
In the event of a situation or dispute involving the assignment of a trademark, a trademark assignment agreement can be used as reliable proof or evidence. Such assignment agreements safeguard the author’s or trademark owner’s legal rights.
Protection of Intellectual Property
By preserving trademark registrations, trademark assignment contributes to safeguarding intellectual property.
The assignment of a trademark aids in business expansion into related industries’ markets. With the combined efforts of the assignor and assignee, the brand value will increase.
Valuation of a trademark
Developing a brand costs a lot of money, time, and effort. The owners or authors of the trademark can thus receive the trademark’s value in cash by assigning the trademark to a third party.
Assignments of various trademarks
A trademark assignment can take one of four forms:
Assignment of a portion
It denotes a restriction or specification on transferring ownership to particular goods or services. Only a portion of the assignor’s ownership of specific goods and services is shared as part of the partial assignment.
Finish the task.
It refers to handing over all rights, including royalties, the right to transfer, the right to further transfer, etc., from one person to another. Under the terms of a complete assignment, the assignor transfers all of their rights to the registered trademark to the assignee.
Working on a project for goodwill
To assign a trademark is to transfer it along with all of the rights and values attached to it from one person to another. In an “assignment with Goodwill,” the assignor of the trademark transfers to the assignee both the trademark’s rights and its value.
Gross assignment, also known as an assignment without goodwill
In this trademark assignment, the assignor will limit the buyer’s rights while transferring the trademark. Here, the assignor forbids the buyer from using a product brand the assignor already uses. In other words, the goodwill connected to the brand is not transferred to the assignee.
Conditions for Assignment of a Trademark
- The assignor and the assignee must sign a legal document to transfer the trademark.
- The transfer to the other party is requested about a legal title. As a result, the agreement must include all pertinent information about the trademark, such as the name, application number, class number, etc.
- The key clause of the contract should state that the party transferring the trademark is the legitimate owner. The trademark’s assignor should be the sole owner of all rights, titles, and interests.
- The agreement should also mention the sum paid by the assignee in exchange for the trademark transfer. The transfer of a trademark also involves the transfer of the brand’s goodwill, it should be noted.
Assignment of a trademark procedure
Step 1: Submit a request for a trademark assignment
The assignor, the assignee, or both may apply to the assignment.
Step 2: Submitting the TM-P form
You must comply with all requirements outlined in form TM-P and pay the required fee before submitting your application for trademark assignment to the registrar.
Step 3: Submission of documents
Then, within six months of the date of acquisition, you must submit all the necessary paperwork. Contact our experts if you would like more information about the documentation process.
Step 4: Processing applications and promoting the assignment
The applicant must advertise the assignment as specified by the registrar once the application has been processed. A copy of the advertisement must also be delivered to the registrar’s office.
Step 5: Approval
The registrar will designate the assignee as the trademark owner once the application has been approved.
Documents necessary for assigning a trademark
- Trademark registration certificate
- Information about the assignor and assignee, including proof of identity and address
- A NOC from the registered trademark’s first owner
- An explanation of trademark transfers that include or exclude goodwill
- A copy of the advertisement and registrar’s instructions
- Witnesses and Trademark Signatories
- Oath Commissioner / Notary
- Proof of the execution’s time and location
- Power of attorney or a letter of authorization
- Anything else in writing that might be required
Restrictions on the transfer of a trademark
- The registrar may decline to register a trademark assignment under some circumstances because the process of trademark assignment is procedural.
- The Trademarks Act of 1999 imposes certain restrictions on registered trademarks. There is potential for confusion or interference with another mark when a registered trademark is assigned, and these possibilities should be investigated.
- The limitations on assignment were put in place to prevent the creation of a prerogative that would apply to multiple people for the same goods or services. Because of this, the registrar won’t permit a transfer that could grant ownership of a trademark to various parties with similar descriptions of goods or services or individuals with close personal ties.
Assignment of a trademark’s contents
The following are the fundamental components of a trademark assignment in India:
- Implementation Date
- Information on the Mark
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