What is Trademark Assignment?
Assignment of a trademark arises when the ownership rights of such trademark or brand, is transferred from one owner/party to another person. Such an assignment of a trademark can be with or without the goodwill of the business.
In the case of a registered Trademark, such assignment is compulsory to be recorded in the Register of trade marks. It can be transferred through deeds, agreements etc between two persons.
It usually involves a one-time payment. Such an agreement (often called an assignment deed). In both cases i.e. in registered or unregistered trademark assignment, the assignee must apply to the Registrar within 6 months.
Advantages of a Trademark Assignment
- Unlock Value
Due to assignment agreement, the brand owner is able to unlock the value of the brand, which until the point of transfer was only a value on paper.
Rather than forming its new brand it would take over or enter a market with an already well-known brand to save its time as well for fast acquiring the ready market and also eliminate competition.
- Legal Evidence
If any dispute arises in relation to the trademark, the legality of using such a trademark would easily be established through the agreement/deed. The Registrar make sure that all the checks are in place by examining the validity of all the clauses in the agreement.
Types of Trademark Assignment
Trademarks can be Assigned as follows:
- Complete Assignment of a Trademark
In this, the owner of the trademark transfers all the rights and privileges with respect to the trademark, with the transfer of the rights such as the right to further transfer, earning royalties, etc., to another person or other entity.
In this type assignment, the transfer of ownership is limited to specific product or service only. The owner may retain the right to further transfer, to earn royalties, etc.
Assignment for Different Manners
- One of the forms is complete assignment to other person or entity.
- Assignment is done to another person/entity but with regard to only some of the goods and services.
- Assignment of trademark with goodwill.
- Assignment can be done without goodwill too.
Trademark Registration procedure
For trademark assignment, the documents required for processing are communicated to the parties. The deed will be drafted accordingly and sent to both parties for their signing purpose and also notarize the same subsequently.
- File the necessary forms namely
- Form TM 16 Assignment of unregistered trademark
- Form TM 23 Assignment of registered trademark
- Form TM 24 Assignment of registered trademark
The Registrar will first scrutinize the deed or agreement to check that no misperception with regards to the assignment of the trademark. Once the Registrar is satisfied with the fairness of all the clauses of the agreement, the assignment will be published in the Trade Marks Journal. The Registrar will consider the agreement and on seeing the response to the publication done and accordingly allow or disallow the assignment entry in the Trademark Registry.
FAQs of Trademark Assignment
A trademark assignment happens when the ownership rights of a trademark or brand are transferred from one party or owner to another person.
Yes, an assignment of a trademark can be done with or without the goodwill of the business.
Yes, in the case of a registered Trademark, it is compulsory to get such an assignment recorded in the Register of trademarks.
An individual can transfer or assign his/her trademark through deeds, agreements, etc.
Yes, it is mandatory that a Trademark Assignment must be duly written, notorised, stamped, and has the correct value or denomination.
One can conduct the process of a Trademark search or TM search to know whether something is already trademarked or not.
The two main advantages of trademark assignment in India are Unlock Value, and it acts as a Legal Evidence in the eyes of the law.
The different types of Trademark Assignment Agreement are Assignment and Transfer Agreement; Assignment of Intellectual Property Rights Agreement; Intellectual Property Assignment; Transfer of Trademark Rights; and Trademark Purchase and Trademark Assignment Agreement.
The basic elements of Trademark Assignment Agreement in India are Effective Date; Details of Trademark; Assignor; Assignee; Warranties; Consideration; Signatures; and Notary Public.
In both registered and unregistered trademark assignment, the assignee must apply to the Registrar within a period of 6 months.