What is Trademark Assignment – Process & Documents

Trademark Assignment is defined as transferring the owner’s right, interest and title in a trademark. A Trademark is an Intellectual property and the owner of a trademark has the right to sell, license, or transfer the same through the assignment agreement or Trademark licensing. 

The Trademark Act, 1999 deals with the assignment and licensing of the trademark. Where a trademark is registered the assignment is required to be recorded in the Trademark register.

The process when the right and ownership of the trademark are transferred to any other person is called the assignment of the trademark. The partial assignment of a trademark is known as licensing. In this blog, we will learn the process and required documents for the assignment.

What is the Trademark Assignment Procedure in India?

The assignment takes place through the execution of the agreement between the parties which is known as an assignment agreement. The process of assignment of the trademark is given below:

·        The owner of the trademark or assignor assigns his/her rights in the trademark through an assignment agreement to the assignee.

·        The assignor or assignee or both can make a joint request to register the assignment by filing an application of an assignment in Form TM-P to the register of trademarks.

·        Form TM-P must be filled with the registrar of the trademark within six months from the date of the assignment. In the trademark assignment process, the application can be filed after six months of assignment but the fee may vary accordingly.

·        The assignment must be advertised and the registrar’s direction should be submitted to the office of the registrar of trademarks.

·        Upon the receipt of the assignment application of trademark in Form TM-P with the required documents, the registrar of trademarks will register the assignee as the owner of the trademark and record in the register about the specifications of the assignment.

What are the Documents Required for Assignment of Trademark in India?

The basic documents required trademark for the assignment are as follows:

·        Certificate of Trademark registration

·        Assignment agreement of trademark

·        NOC from the assignor

·        Documents of Identification of both the assignor and assignee.

·        Trademark registration is the process that secures the brand from unauthorized use and infringement. There is no need of submitting the original documents.

Important Points for Drafting a Trademark Assignment Agreement

The proprietor of a trademark assigns to the assignee through a properly executed assignment agreement. The assignment must be in written form including two parties. The agreement should be drafted keeping the following points in mind:

·        The rights of the trademark shall not be detrimentally affected due to the obligations contained in the agreement.

·        The decision and requirement relating whether the assignment is with or without the goodwill of the business must be particularly mentioned.

·        The agreement should show a picture of the transaction.

·        The geographical area of the location in which the assignee possesses the values and rights in the trademark must be given.

·        The trademark assignment India provides the transfer of the right to collect and sue damages for future and past infringements must be mentioned.

·        The agreement must be duly executed which means it must be stamped and notarised as per the stamp duty. The notarization gives benefits to the assignee. It is important so that there will be no possibility of wilful document fraud relating to the assignment.

·        The signatures of parties and witnesses must be given.

·        The place and date of agreement execution must be given.

·        The date and day of the assignment along with the parties to the assignment must be given.

·        The agreement should also mention whether or not it will be binding on the legal heirs of both the assignor and assignee.

What are the Types of Trademark Assignments?

The four different kinds of assignments which are discussed below are as follows:

1. Complete Assignment – In this type of assignment, the trademark owner transfers all rights in the trademark to another person including the right to earn royalties to further transfer, etc.

2. Partial Assignment – The trademark owner assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or goods.

3. Assignment with the goodwill of business – The trademark owner assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill then the assignee can also use the trademark for any category of goods or services including the goods or services which were already used by the assignor. You can download the trademark assignment pdf from google.

4. Assignment Without the Goodwill of Business-The trademark owner assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor can restrict the transfer of the rights in the case of assignment of trademark without goodwill. The assignor assigns with the specific condition stating that the assignee is not entitled to use the trademark related to the products or services already in use by the assignor.

What are the Benefits of the Assignment of the Trademark?

The following are benefits of the assignment are given below:

·        The assignment enables the trademark owner to encash the value of his/her brand.

·        The trademark assignment form is filled in TM-P with the registrar within six months from the date of assignment.

·        The assignee obtains the rights of an already established brand due to the assignment.

·        The assignment supports the assignor and the assignee to expand their respective businesses.

·        The assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

·        The assignment agreement is valid proof in case of any dispute of trademark, the legal rights of the assignee can be established easily through the agreement. The registry assures that all the checks are in place and the validity of the clause mentioned in the agreement is published in the trademark journal.

The trademark assignment fees for each trademark are Rs. 9000/- when the request for assignment is filed online and Rs. 10000/- when the request for assignment is filed physically at the Trademark office.

Conclusion

The assignment of a brand can open a wide range of opportunities with proper planning and execution in the right direction. The registration is important to register the assignment and transmission of the trademark will be updated in the register of the trademark. It permits the third party to have access to the right of the owner of the trademark. The trademark remains alive with an assignment to the other person. There are various benefits to the assignor and assignee as well.