In the era of intense competition in the market, it is difficult for entrepreneurs with the same product category and class to distinguish their product from their competitors. So, customers...
If you are thinking to get right over the trademark of others, then you have the option of Trademark assignment. Before we proceed on to Trademark Assignment in India, first of all, it is necessary to know what is a trademark?
A trademark is a unique symbol, sign, design or name used to represent a business or products. Trademark assignment is the best way to assign your trademark rights to someone else. An assignment is the grant of permission to use a mark in some manner but does not transfer any rights of ownership in the rank.
In this blog, we will discuss various aspects of the Trademark Assignment in India.
What is the Trademark Assignment in India?
Trademark assignment is the process of transfer of ownership of a trademark from one entity/ person to another entity/person. It is a way of obtaining the rights of a registered trademark. It can be done for both registered and unregistered trademarks. This is affected by a duly executed assignment deed between the concerned parties. Duly executed assignment deed is commonly known as Trademark Assignment agreement.
In a Trademark assignment, the party assigning or transferring its trademark right is known as assignor and the party to whom rights are transferred is known as assignee.
Why the Trademark Assignment in India is required?
If you desire to get a trademark which is already present on record with some other person or company, then you cannot use the registered trademark of others without their consent. However, in this circumstance, the trademark assignment comes into play. Moreover, you become eligible to get permission for using the desired trademark. It is essential to avoid trademark infringement.
What are the requirements for a Trademark Assignment?
For a valid Trademark assignment, there are certain requirements that you must fulfil.
The list of the requirements are as follows::
Assignor/trademark owner has an intention and needs to give consent for such a trademark assignment.
- Trademark assignment must be in writing
- Identification of parties (Assignor and assignee)
- Identified document of both the parties (Assignor and assignee)
- Proper identification of the marks
- Execution of the Trademark Assignment Agreement
- Fulfill the necessity of Power of attorney, if any
- The inclusion of goodwill if any, because as per the Trademarks Act, a trademark can be assignable and transmissible with or without the goodwill of the concerned business.
Who is authorized to assign a Trademark?
An owner of a registered trademark has complete authority and all the rights to assign the trademark to another person. The owner of the registered trademark may assign the trademark either in respect of all goods or services or both for which the proposed trademark is registered.
Types of Trademark Assignment
Multiple types of Trademark Assignment has acceptance in India. List of those multiple types of Trademark assignment is discussed below:
In this type of trademark assignment, all the rights of the registered trademark are assigned to a third party. The owner of the registered trademark transfers all his/her rights with respect to a mark to another entity. This includes the transfer of rights like the right to further transfer, to earn royalties etc.
Under this assignment, the assignee becomes the sole owner of the right to assign, trade and market it. The assignee has full authority to prohibit others who use it without any authorization.
(For example, The proprietor of a brand A, sells his/her mark completely through an agreement to B and after this sale, A cannot retain any with respect to that particular brand sold to B)
In Partial trademark assignment, the transfer of ownership of the trademark is restricted only to certain products/services as decided by the parties and as written in Trademark assignment agreement.
(For example, if the owner of a trademark named “Dineout” mentions in the assignment agreement that the assignee can use the assigned trademark for only food products, then the assignee is not entitled to use the trademark for any other goods/services except food products)
Assignment with Goodwill
In this type of trademark assignment, the trademark owner (Assignor) transfers the trademark as well as the value of the trademark associated with the product. When an assignment is made with goodwill, then the rights and value associated with the trademark are given for using the proposed mark in respect of products and services that are the assignor has already sold.
For example, if the owner of a brand “Mother dairy” dealing with dairy products sells his brand to A, then A becomes able to use such brand with respect to dairy products as well as other products it manufactures.
Assignment without Goodwill
Here, the trademark owner (Assignor) restricts the right of the assignee. Additionally, it doesn’t allow him/her to use the trademark in respect of goods already being sold by the trademark owner. Thus, goodwill attached to that trademark is not transferred to the assignee.
Under this type of assignment, both the assignor and assignee can use the same trademark but in respect of distinct goods and services.
(For example, if the owner of the trademark “LG” uses it for producing and marketing of refrigerator and decides to assign it to another party without any goodwill, then another party can use the trademark for the products apart from the refrigerator.)
Benefits of Trademark Assignment
There are numerous benefits of Trademark Assignment. List of benefits of the trademark assignment is:
Security for both parties (Assignor and Assignee)
For a valid trademark assignment, trademark assignment agreement must execute between both parties i.e. assignor and assignee. The trademark assignment agreement creates a valid proof. Moreover, it is admissible in court in case any dispute arises between them.
Beneficial for a well-established brand
With a valid trademark assignment, it isn’t necessary for an assignee to invest any money, time, and labor in creating, or marketing of a brand. If the trademark already exists, then the assignee need not pass the trademark registration process.
A trademark assignment helps you to expand your business. With the help of Trademark assignment, assignors as well as assignees, get the right to associate the brand with their respective business. Furthermore, it helps both the parties to expand their business.
Unlock of Value
Through a trademark assignment and assignment agreement, the owner of the brand is able to unlock the value of the brand.
On the other hand, the assignee could be significantly better off entering a market with an already well-known brand instead of entirely building a new one.
The process of Trademark Assignment in India
If you find it interested than apply for trademark assignment, where you have to apply in the manner as described below:
Trademark Assignment application
An application for a trademark assignment must be made by the Assignor and Assignee. Both of them can jointly request to register an assignee as a subsequent proprietor.
Filing of TM-P form (Application for the post-registration changes in the Trademarks)
In the next step, it is necessary to file the TM-P form. Through TM-P form, if it is necessary then, in future, you can make changes in the trademark. You must file the TM-P form with the Registrar of Trademark within 6 months from the date of acquisition of proprietorship.
Submission of Documents
After filing up TM-P form, you need to submit all the necessary documents essential for Trademark assignment.
Processing of the application
After the successful submission of the assignment application and the necessary documents, the application will be processed.
Advertisement of the Assignment
You have to make an advertisement for the assignment in such manner and within such period as directed by the Registrar. You must submit the copy of the direction of Registrar and advertisement of the assignment.
Upon receipt of the trademark assignment application and all the documents and after proper verification if Registrar satisfies, then he will approve the application. However, Registrar will register the assignee as the proprietor of the trademark. The Registrar will enter the details of the assignment in the register.
Documents required for Trademark assignment in India
List of the documents necessary for trademark assignment is as under:
- Agreement of trademark assignment.
- The identified document of both assignor and assignee.
- The Power of attorney.
Fee for Trademark assignment
Under Trademark Act, the government of India made a provision with regard to payment of fees required for trademark assignment. The fee structure as prescribed are as follows:
- If a trademark assignment is made within six months from the date of acquisition of proprietorship, then the statutory fee is Rs. 5,000.
- If trademark assignment is made after the expiry of six months but before 12 months from the date of acquisition of proprietorship, then the statutory fee is Rs. 7,000.
- If a trademark assignment is made after 12 months from the date of acquisition of proprietorship, then the statutory fee is Rs. 10,000.
Trademark assignment involves a degree of planning for the future of both parties (assignor and assignee) and brand in question. Trademark assignment helps in keeping the brand alive and through trademark assignment both the assignor and assignee avail many benefits.
Swarit advisors is one of the recognized consultants which provides the most satisfactory and end-to-end solution on the subject of trademark assignment. If you want to know more about the trademark assignment in India, then kindly contact us.