Procedure for Trademark Assignment in India: A Complete Guide

Every trademark owner in India has the exclusive right to transfer, sell, and license its trademark. The procedure for Trademark Assignment in India is the transfer of trademark ownership from one individual to another. The owner of a trademark transfer all their rights to the receiving party.

The owner can transfer his or her right by licensing or by assignment, and the assignee will become the owner of the trademark. The Trademark Act, 1999, deals with Trademark Assignment and licensing. In this blog, we discuss the types, documents and procedure for Trademark Assignment.

Trademark Assignment – An Overview

A Trademark Assignment is a lettered document that transfers a registered trademark from the original owner to another owner. The original owner of a registered trademark is known as “Assignor”, and the receiving owner is known as“Assignee”. Partial Trademark Assignment is known as Licensing. Additional, the Trademark Assignment usually takes place through the execution of the agreement between the parties is known as the Trademark Assignment Agreement. It will be deliberated as legally valid when it shows the purpose of the assignor to transfer partial or complete trademark ownership.

Types of Trademark Assignment

There are four different types of Trademark Assignment, and you can check the same below:

Complete Assignment

In a complete assignment, complete ownership rights of a registered trademark are transferred to the second owner. The original owner of a trademark transfers all the rights with respect to marking to the other party, which contains rights of future transfer, to earn royalties, etc. For instance, Suppose A is the owner of a brand sells his or her mark totally to B through an agreement. Now, A doesn’t keep any rights with respect to the brand.

Partial Assignment

In this assignment, transfer of ownership is limited to some products or services, as parties have said in the Trademark Assignment Agreement. Additional, a partial and complete assignment can be made with Goodwill or without Goodwill.

Assignment with Goodwill

These assignments are made when both the value and the right of the trademark is associated with the product are also transferred.

Assignment without Goodwill

When the brand’s owner puts a restriction on the buyer’s right and doesn’t allow them to use such a brand for products being used by the original brand owner, then it is called Assignment without Goodwill.

Moreover, Goodwill which is attached to such a brand concerning a product that was already sold under the brand, is not transferred to the future owner. In some countries like the United States of America (USA), an assignment without Goodwill is not allowable, but in India, it is allowable. If there is a chance of creating confusion in the public minds with regard to the registered trademark, the Trademark Act, 1999 puts certain restrictions on such assignments. You can check all the restrictions below:

• The Trademark Act, 1999 also puts a restriction on the Trademark Assignment, which results in different people using a similar trademark in different areas of the country at the same time simultaneously.
• There is also a restriction on trademark assignment, which results in the creation of trademark rights for more than one individual with respect to the same products.

Vital Documents Required for the Procedure for Trademark Assignment in India

Following is the list of all the essential documents required for the Procedure for Trademark Assignment in India:

• Submit any identity proofs of both parties such as Aadhar Card/Ration Card, Voter’s ID, Driver’s License, Passport, etc.).
• Form TM-P.
• Fee Payment.
• Submit a copy of the Assignment Agreement.

What is the Process to Register Trademark with the Registry?

Following is the process to record the assignment of a trademark with the Registry:

• Assignment of a Registered Trademark: Section 38 of the Trademark Act, 1999, tells about the transmission and allotment of the trademark with or without Goodwill of the business. It also defines that a trademark can be assigned in part with or without Goodwill. All the trademark assignments can be made on Form 23 or Form 24 of the trademark.
• Assignment of the Unregistered Trademark: Under Section 39 of the Trademark Act, 199 specifies that any unregistered trademark can be further transmitted or assigned with or without the Goodwill. One can make an appeal for the same under Form TM-16.

Procedure for Trademark Assignment in India

Following is the procedure for Trademark Assignment in India:

• First, the application must file an application for the Trademark Assignment, and the plan can be made by the assignee or assignor or both. Provide all the details of the transfer under Form TM-P.
• Once you draft the application, then submit the application to the  Trademark Registrar. The same must be done within six months of gaining ownership.
• The Registrar’s direction is compulsory before the expiry of six months in the case when Trademark Assignment is done with the Goodwill or of a registered mark.
• Registrar will stipulate the advertisement of Trademark Registration. Once the requirement is done, the applicant can create an advertisement accordingly.  The applicant is required to submit an advertisement copy and direction of the Registrar in the office.
• In the end, once the Registrar approves the application and all the documents submitted, they will officially transfer the trademark from the original owner to the future owner.

Note: After the procedure for Trademark Assignment, the name of the receiving owner is registered as a new owner or proprietor. After this, the assignee is able to use the registered trademark as per the agreement terms. Trademark Assignment application can be made in Form-24. For the joint appeal, the assignor and assignee can make an appeal in Form TM-23.

Conclusion

The Trademark Assignment of a brand brings more opportunities with proper planning, and you can avail these by completing the procedure for Trademark Assignment. It permits the third-party to have access to the right of the original owner of the brand. With the Trademark Assignment, the brand remains alive, and both the assignor and assignee avail several benefits.

Also, Read: Process of Trademark Search in India – An Overview