Trademark Assignment

Trademark Assignment is the transfer of the owner's right in the trademark to another person. Trademark owners can transfer trademarks in the same way they can transfer physical properties. One way to transfer a trademark is through the assignment. The assignment is the transfer of rights, interests, titles, and benefits from one person to another.

The transferring party is called the assignor and the receiving party is called the assignee. As per Section 2(1)(b) of the Trade Marks Act, 1999 states that the assignment of a trademark in writing form by an act of the parties concerned. Both unregistered and registered trademarks can be assigned with or without business goodwill.

Details of Trademark Assignment India

Assignment of a trademark occurs when ownership of a mark is transferred from one party to another, whether with or without goodwill. In the case of a registered trademark, such an assignment must be registered in the Registry of Trademarks.

A mark may be assigned or transferred to another entity in any of the following ways;

Complete Assignment to Another Entity

The owner transfers all his rights in respect of a mark to another entity, including the transfer of rights such as the right to further transfer, to receive royalties, etc. (E.g. X, the owner of the brand, sells his mark outright by contract to Y. Thereafter X does not retain any rights in respect of the brand)

Assignment to Another Entity but Only in Respect of Certain Goods/Services

Transfer of ownership is limited to specific products or services only. (E.g. P, the owner of a brand used for jams and jellies and dairy products. P assigns to Q the rights in the brand in respect of dairy products only and retains the rights in the brand in respect of jams and jellies.) This is called a partial trademark assignment.

Assignment with Goodwill

Such assignment is also known as a gross assignment, where the owner of the brand restricts the right of the buyer and does not allow the use of the such brand for products used by the original owner. Thus, the goodwill attached to such a brand is not transferred to the buyer in respect of the product already sold under such a brand. (E.g. P, owner of the brand "Shudh" relating to dairy products, sells his brand to Q on the understanding that Q will not be able to use the mark "Shudh" in respect of dairy products but may use the brand for any other products being manufactured by it. In such a case the goodwill associated with the brand "Shudh" for dairy products is not transferred to Q and Q needs to create a separate goodwill of the brand "Shudh" for any other product or service such as a restaurant in which Q proposes to use the brand). In many jurisdictions, such as the United States, assigning a mark without goodwill is not permitted at all. India on the other hand allows assignment without consent.

For the sample, you can get the trademark assignment pdf on the internet.

Eligibility for Assigning a Trademark

Section 37 of the Trade Marks Act, 1999 states that a person registered as the proprietor of a trademark in the Register of TradeMarks has the right to assign the trademark and to receive consideration for such assignment. Thus, the trademark owner can assign the trademark to another person.

Trademark Assignment Procedure in India

The procedure for assigning a trademark in India is as follows;

• The owner of a trademark (assignor) assigns his rights in the trademark to an assignee through an assignment of trademark agreement.
• The assignor or the assignee, or both, may make a joint request to register the assignment by filing an assignment trademark application formTM-P at the Registry of Trademarks.
• Form TM-P must be filed with the Registrar of trademarks within six months from the date of assignment. After six months of the assignment, The application can be filed, but the fee may vary accordingly.
• The assignment must be advertised in such manner and within such period as may be directed by the Registrar of TradeMarks.
• A copy of the advertisement and a copy of the Registrar's direction should be deposited in the office of the Registrar of TradeMarks.
• After receiving the assignment of trademark formTM-P and the necessary documents, the Registrar of Trademarks will register the person designated as the owner of the trademark and record the particulars of the assignment in the registration.

Documents Required Trademark of Assignment

The following documents are required to be submitted to the Registrar of Trademarks along with Form TM-P

• Assignment Trademark Agreement.
• Trademark Certificate.
• NOC from Appointer.
• Identity documents of the appointer and appointee

Trademark Assignment Fees and Charges

To apply for a registered trademark, you will need to pay the applicable filing fee and send your application.

• In case of the assignment of a trademark for each trademark registered, the authorized subsequent owner is INR 9000/- when the request to record assignment is filed online and INR 10000 /- when the request is filed physically at the trademark office. These are only government fees.
• Individuals, small enterprises, or startups must file with the TM application by paying a fee of 4,500 for e-filing or 5,000 for manual filing.

Trademark Assignment Stamp Duty

Based on the type of TM applied for according to the Stamp Duty Act, each TM application or assignment submitted is subject to a stamp. An application to register the title of a person entitled by assignment is made on Form TM-P.

Here, it may be useful to mention that as per the provisions mentioned under the Indian Stamp Act, stamp duty at 5% is payable based on the amount of consideration mentioned.

Difference between Assignment and Transmission of a Trademark

The terms assignment of trademark and transmission of a trademark are used interchangeably. An assignment is a handover of possession of a brand. In contrast, this agreement retains ownership of the trademark but allows another party to use part of the trademark, but not the entire stamp duty for the trademark assignment.

Specification of Assignment of Trademarks

Some points about the assignment of a trademark are as follows:

1. The trademark assignment is when a trademark is transferred from one person to another, depending on whether it is registered or unregistered, ownership, and limitations may vary depending on the terms and conditions of the transfer.

2. Obtaining a trademark registration not only protects your brand from infringers but also allows you to realize the true value of your brand name. One of the benefits of obtaining a registration is the ability to assign a trademark. This allows you to permanently or temporarily assign your trademark to another person.

Specification of Trademark Transmission

Transmission of a trademark is as follows,

1. Complete Transfer

It is a contract that transfers all rights including the right to transfer or sell the property, the right to receive royalties or royalties on the property, and other similar rights from one person to another.

2. Partial Transfer

This trademark transfer involves the transfer of specific service marks or product marks only.

3. Transfer in Good Faith

A trademark assignment is the transfer of a trademark from one party to another based on the goodwill of the owner along with all rights and values.

A Transfer without Good Faith

A trademark transfer is when a company or trademark owner allows another to control the trademark, even if it is used for the same purpose.

Your Business is Expanding

If you want to grow your business seamlessly and at a low cost then assigning a trademark is one way. You can add support from another organization to help grow your business by licensing your brand name.

Assignment of trademark benefits both the assignor and the assignee and allows you to reach places that you would not be able to reach if you were running a solo business.

Plus, by partially outsourcing your trademark, you get the flexibility to work with more vendors and, as a result, expand your business into new markets.

Unlocking the Value of Your Trademark

Another benefit of trademark assignment is that it informs the owner of the brand name of its value. When you assign a trademark to someone, you can see the value of your brand from the perspective of the assignee. This widened horizon will help you make better decisions when determining the future of your trademark.

Moreover, if you understand the value of your brand, you will have more confidence when entering the market. It has an indirect effect on your mind, which you can use to further promote your business.

Valid Proof of Trademark

With a trademark assignment, you'll have another tool in your inventory to combat any opposition. Assigning your trademark to another person is a legal process that requires the use of legal documents. In the event of a trademark dispute, the legal rights will be easily demonstrated through a deed of assignment alone. The registrar ensures that all checks are in order by reviewing the validity of all provisions of the agreement and publishing the assignment in the Trademark Journal.

Diversify your Marketing Strategy

Not everyone with a trademark is a brilliant marketer. And, given the importance of how you communicate with your clients, you need to be adept at marketing to reach the largest possible audience.

Diversify your marketing strategy by outsourcing your brand name. The assignee will put his spin on things to gain access to the client base. Their approach will be different from yours and as a result, it will be more effective.

Starting a business in India requires serious consideration. To expand your firm, you should use different strategies. Some of them may not be common and the assignment of a trademark is one of them.

This process not only increases the value of your brand but also secures third-party help to help you build your business through marketing. The assignment brings you many benefits.