What is the Process of Trademark Transfer? – An Overview

Trademark is a form of IP (Intellectual Property), the same as the physical property like land and just like a landowner has the right to sell or transfer their property or land, in a similar manner, the Trademark owner also has the right to sell or transfer a Trademark. Every Trademark owner who wants to transfer their right concerning their Trademark can do so either by Trademark Licensing or Trademark Assignment, which is regulated under the Trade Marks Act, 1999. Scroll down to check the process of Trademark Transfer in India.

What is Trademark Transfer?

Before we discuss the process of Trademark Transfer in India, let’s first understand the meaning of Trademark Transfer. Trademark Transfer is also known as Trademark Assignment, and it’s a process through which Trademark ownership and rights are transferred to any other person. A Trademark Transfer takes place between the parties only after implementing an agreement called Trademark Transfer/Assignment Agreement.

Forms of Trademark Assignment or Transfer

Every registered Trademark is transferable & assignable, and it can take one of the following forms:

• The Trademark Transfer or Assignment can be done with/without transferring the business goodwill. For example, Tata Motors took over the Trademark of Jaguar in India and also TATA Motors also took over the goodwill of Jaguar completely in the automobile industry.
• Trademark Assignment can also be made for some or all of the products or services for which the Trademark has been assigned. For example, a cement company having various other businesses such as construction, quarrying & interior designing may assign the Trademark of its construction business only.

Importance and Formulation of Trademark Transfer or Assignment Agreement

As per the Trademarks Act, 1999^[1], an assignment of transfer can only be done by an agreement between the parties concerned. Hence, both the assignee and assignor must execute documents for Trademark transferring. So, to help you navigate the process of Trademark Transfer or Assignment, the following are some essentials:

1. Mark Details: Since the title over the Trademark that is sought to be transferred, Trademark details should be specified in the assignment agreement. Factors of a Trademark like application number, brand name, present status, the class number should be mentioned in the agreement without fail.
2. Consideration: The agreement should state the amount paid by the assignee to the assignor in exchange for the assignment. The receipt of consideration establishes that all rights, interests, and titles in the Trademark together have been assigned.
3. Description of Legal Titles: The assignor must have all the titles, interests, and rights in the Trademark. The working part of the assignment agreement must clearly mention that an individual transferring the Trademark is its legal owner. It should also create that the assigner (either themselves or via their successor, Power of Attorney owner) has the entire right, absolute power and legal authority to assign or sell the mark.
4. Goodwill: You may also state whether the Trademark Transfer comprises the transfer of business goodwill, product permission & other IPR (Intellectual Property Rights).
5. Dispute Resolution & Governing Law: Parties may equally decide to comprise valid jurisdiction for dispute resolution. They also comprise a clause preferring arbitration specifying the seat of such arbitration and the choice of law governing the dispute.

Following are some other details that should be mentioned in the Assignment Deed during the process of Trademark Transfer:

• The right of the assignee to sue against any other party for Trademark Infringement. The description of the assignor from any interest or right in the proposed Trademark after the agreement is concluded.
• A statement that announces that the assignee would be eligible to avail and use the Trademark for their business without any hindrance or objection by either the title owner or any individual setting claim under them. Now we can discuss the process of Trademark Transfer in India.

Process of Trademark Transfer or Assignment in India

Following is the process of Trademark Transfer in India:

Step 1: Application: The application for Trademark Transfer or Assignmentcan be made by the assignee or assignor or by both.

Step 2: Filing of TM-P Form: To submit the application to the Trademark Registrar for the Transfer or Assignment, you’ll have to complete all the formalities linked with the TM-P Form and pay the fees.

Step 3: Documents: After the above step, you have to submit all the vital documents within six months from the Acquisition Date.

Step 4: Processing & Advertisement of Assignment or Transfer Application: Once the application is processed, then the applicant must advertise the assignment or transfer application in such a way as directed by the Trademark Registrar. Submit an advertisement copy to the office of the Trademark Registrar.

Step 5: Approval: Once the application is verified or examined, the Trademark Registrar will register the assignee as the Trademark owner or holder.

Conclusion

The process of Trademark Transfer or Assignment is the time taken, and it requires extensive documentation. But, it can be highly rewarding & extremely profitable. In case you want to take any help regarding Trademark Assignment, then you can call any legal expert who will assist you in this.

Read our article:All You Need to Know About Pharmaceutical Trademarks