Transfer of Ownership of Trademark through Trademark Assignment

A trademark is a mark which identifies and differentiates a product or service from those of the other. A Trademark is an intellectual property in which the owner of the trademark has a right to transfer his rights in trademark to the other. Once the Trademark registration is done, every owner of the trademark can transfer his rights in respect to his mark by way of trademark assignment or trademark licensing in accordance with the procedure prescribed under the Indian Trademark Act, 1999.  The transfer can be temporary through licensing or permanent through the assignment. In this article, we will discuss about the transfer of ownership of Trademark through Trademark assignment.

What is Trademark Assignment?

According to Section 37 of the Indian Trademark Act, 1999 “Trademark assignment is the transfer of an owner’s rights, title and interest in a trademark or brand mark. In a case where the trademark is registered, the assignment is required to be recorded in the trademark register”.

A trademark assignment is a process through which the ownership rights are transferred by the owner of the trademark to the other person. It is a document signed by the original owner also known as assignor, transferring his ownership of trademark to a new owner also known as the assignee. Generally, only the assignor is required to sign the trademark assignment. It is only after the execution of an agreement, the Trademark assignment is made.

Conditions required to be fulfilled for Trademark Assignment

Certain conditions required to be fulfilled for trademark Assignment in India are as follows:

• The Trademark assignment must be done in writing.
• The owner of the trademark must have the intention and consent for trademark assignment.
• Two identifying parties must exist, that is: – assignor and the assignee.
• Valid documents must be submitted by the assignor and assignee.
• There must be valid execution of trademark assignment agreement.
• There must be proper identification of the mark, proper consideration including the transfer of trademark in goodwill.

Complete and Partial Trademark Assignment

The transfer of ownership of trademark through trademark assignment can be done in the following ways:

Complete Transfer

The transfer of full ownership is made under the complete trademark assignment. That is, all the rights are transferred by the assignor to the assignee, allowing the assignee to share, process and use the mark in whichever and whatever way he wants and protect itself from doing any trademark infringement. Once the trademark is assigned completely, the assignor holds no control over the logo, brand or anything related to it.

Partial Assignment

The partial trademark assignment is under which the transfer of trademark rights are restricted to specific services or products. It is beneficial for those who do not want to lose complete control over the trademark rights. It allows the assignor to share his rights with the assignee by adding terms and conditions that limit the assignee’s control to some products. The assignee is allowed to use the trademark rights for only those things that are allowed or permitted by the assignor.

What is the procedure to transfer the ownership of Trademark through trademark assignment?

The application for Trademark assignment can be made by following the below-mentioned steps:

Application for Trademark Assignment

The first is that the assignor or the assignee is required to make an application for the trademark assignment. Both the assignor and the assignee can jointly make a request.

File Form TM- P

The applicant is required to file a Form TM- P along with all the required details for the transfer.

Documents Submission

The next step is that the applicant is required to submit all the necessary documents for trademark assignment to the registrar of trademark, once the Form TM- P is filed. The documents must be submitted within 6 months from the date of the acquisition of the proprietorship.

Processing of Application

The application shall be processed once it is successfully submitted along with the necessary documents.

Advertising the Assignment

Once the application is specified, the applicant is required to make an advertisement for the assignment in such a manner as directed by the Registrar. The applicant has to submit the copy of the direction of the registrar and advertisement of the assignment in the office of the registrar.

Assignment of Approval

The Registrar shall verify the application once the trademark assignment application is received. After the proper verification has taken place if the registrar is satisfied he shall approve the application. The assignee will be registered as the proprietor of the trademark by the Registrar. Further the registrar will enter the details of the assignment in the register.

What are the documents required for Trademark Assignment?

• Trademark Assignment Agreement.
• Power of Attorney.
• Certificate of Trademark.
• Assignor and assignee identified documents.
• No Objection Certificate from the owner.

What are the benefits of Trademark Assignment?

Some of the benefits of Trademark Assignment are:

• The transfer of ownership of trademark through trademark assignment helps in the expansion of business and in keeping the brand alive.
• It assignee gets the benefit of not working much on brand building.
• The Trademark assignment secures the rights of the assignor and the assignee as it is a valid proof and has legal standing in the court of law.
• It monetizes the value of the trademark in consideration to the time take for creating a brand.

Conclusion

Transfer of ownership of trademark through trademark assignment needs to be done in accordance with the rules and procedure prescribed under the Trademarks Act, 1999^[1]. Trademark assignment provides a lot of opportunities for the assignor and the assignee to get access to the brand and earn royalty from it. Trademark assignment helps to keep the brand alive and it is upon the owner to decide whether he wishes to transfer the ownership rights either completely or partially to the assignee. Transfer of ownership of trademark through trademark assignment is the most effective method of transferring under intellectual property rights and it helps the trademark owner to preserve the brand and the goodwill.

Also, Read: What are the Different Trademark Symbols?