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Ready to transfer your trademark seamlessly? Rely on the Entermark for a hassle-free trademark assignment process and ensure your brand's legal protection.
Trademark Assignment and transmission refers to a situation when the owner of the trademark sell, license, or transfer the same to another person or entity. It is similar to how physical properties are transferred from one person to another. Section 37 of the Trademark Act, 1999 has specifically defined the term trademark assignment, stating that trademark assignment refers to transferring the trademark owner's right, interest and title in a trademark and a brand mark.
Here, the transferring party is called the assignor, and the receiving party is called the assignee. During the assignment and transmission of the trademark, the assignee assumes complete control and responsibility over the trademark, including the right to use it exclusively for commercial purposes. On the other hand, the assignor relinquishes all assignment of trademark rights and interests in the trademark.
A trademark assignment is a written document that helps the trademark owner to transfer a recognised word, phrase, symbol or design from the original owner to another owner. Any trademark can be assigned when the ownership rights of a trademark or a brand are transferred from one person to another person. However, such trademark assignments can be done with or without the goodwill of the business.
Meanwhile, the registered trademark assignment is mandatory to be recorded in the Register of trademarks. Subsequently, this trademark can be transferred through deeds, agreements, etc., between two persons.
According to section 37 of the Trade Marks Act, of 1999, the person registered as the owner of the trademark before the Registrar of Trademark has the power or authority to assign a trademark and receive consideration for the same. Therefore, the trademark proprietor has the authority for the assignment and transmission of trademark.
Some of the major benefits of trademark assignment that both assignor and assignee receive are as follows:
The trademark assignment enables the trademark owner to encash the value of his or her brand by selling the registered trademark to an assignee. The assignee obtains the rights of a trademark that is already a registered brand in the market. Both assignor and assignee, through trademark assignment, may expand their respective business. During a dispute, the trademark assignment enables both the assignor and assignee to establish their legal rights on the trademark.Here, is the list of various types of trademark assignment:
In a complete assignment, the trademark is transferred from one person to another, thus transferring the entire ownership from the original owner to the new owner of the trademark. Therefore, the original trademark owner holds no right and control over the trademark transferred.
Partial assignment refers to a trademark assignment that is partially transferred by the original owner of the trademark to another person or a company. Here, the owner shall partially transfer the trademark for goods and services to another person but retain ownership of the trademark for other products or services.
Trademark assignment with goodwill means when the trademark is transferred along with the business or a part of the business in which it was used by the original owner. Therefore, when the trademark is assigned with goodwill, the assignee is eligible to use the trademark along with the goods and services that are used by the assignor.
Here, the trademark assignment without goodwill is a transfer of a trademark without any associated business or goodwill. This is a situation where the trademark is transferred separately from the business when it is used by the original trademark owner or when the trademark is no longer needed by the original owner.
Trademark assignment is a legal requirement for transferring a trademark from one entity to another entity. In order to validate the assignment and licensing of trademarks in India, given below list of pre-requisites must be complied with:
The assignor of trademark whenever transfers the trademark to the assignee, must ensure that a properly drafted agreement is executed between the assignor and assignee. Here is the list of important points that should be kept in mind while drafting assignment and licensing of trademarks in India:
The list of documents required for assignment of trademark in India, that are to be submitted by an applicant along with the trademark application form (TM-P) are as follows:
The process of assignment of trademark in India needs to be followed diligently in order to avoid time consumption and ensure a cost-effective; here given below are the procedure for assignment of trademark in India to be followed by an applicant:
Some of the major lists of restrictions on assignment and licensing of trademark in India are given below:
For the trademark whose status is pending and cancellation or opposition, no application for trademark assignment shall proceed unless it is resolved.
In case of the existence of a valid and enforceable license agreement in place for the trademark, no assignor can enter into an agreement of trademark assignment without obtaining the consent of the licensee.
No trademark assignment shall be issued by a registrar if it is found that such an assignment is used to cause confusion among consumers.
An assignment of trademark with goodwill is an assignment trademark in India, where the trademarks are transferred from the assignor to the assignee along with associated rights, values, and entitlements connected to the trademark concerning the specific goods and services. Therefore, in this agreement the concerned assignor passes on the trademark and its goodwill to the assignee.
Assignment of trademark without goodwill is an agreement where the assignor of the trademark registered transfers the trademark to the assignee with entitlements and rights limited to certain goods and services that the assignor is not using the trademark. Thus, this assignment of trademark without goodwill prohibits the assignee from using the trademark that is in connection to goods and services, and the assignor is continuing to use the same trademark transferred.
The timeline to file trademark assignment is six months, the applicant must file the trademark application form i.e. TM-P within six months from the date of the assignment of trademark in India. However, the application for trademark assignment can be filed after the expiry of the six-month time period, along with additional charges.
After completing the procedure for assignment of trademark in India, the applicant must submit the same by depositing the official trademark assignment fee before the registrar. The official fee for trademark assignment in India for each trademark assignment agreement is Rs.9000/- (Nine Thousand) if filled physically before the trademark office, whereas if the trademark assignment is filed online, the official trademark assignment fee is Rs. 10000/- (Ten thousand).
Entermark is India's most trusted platform for trademark registration, search, assignment, and other trademark-related matters. Have a look at the reasons why we are the first choice of businesses and professionals-
A Dedicated Team of 200+ IP Experts Successfully Handled 1000+ Trademark Assignment Cases 99.2% Success Rate in Trademark Assignment Matters Comprehensive Entermark Support Drafting Assignment Agreements Conduct Due Diligence to Verify the Status of the Trademark Handling the Official Paperwork and Communication Post-assignment Support for Trademark Maintenance Cost-effective and Time-saving Solutions Mandatory Compliance SupportThe questions and answers mentioned below are the roadmap for your better understanding. Let's go through it once.