A Trademark Assignment in India is a procedure whereby any person whose name is listed as the owner of a trademark in the register may transfer that ownership to another party, with or without the business’s goodwill.

Trademark rights are transferrable through assignments. When a trademark is assigned to a third party, that party receives ownership of the mark with or without the goodwill. Such a Trademark Assignment agreement may be signed even in cases where the trademark is not registered. When ownership of trademarks is transferred from one party to another, this is known as a Trademark Assignment. Any Trademark Assignment involving a registered trademark must be recorded in the register of trademarks. In this article, we will discuss Trademark Assignment in India.

What is Trademark Assignment?

Trademark Assignment is the procedure by which the right and ownership of a trademark are transferred to another person. Licensing is the general term used to describe partial trademark assignment.

Additionally, the Trademark Assignment Agreement, an agreement between the parties, is often executed before the trademark assignment takes place. When an assignment agreement demonstrates the assignor’s desire to transfer either full or partial ownership of the mark, it will be regarded as legally legitimate.

What is Trademark Licensing?

The idea of trademark licensing permits the use of the mark by someone without transferring ownership. The same can be applied to all or only some of the listed goods and services. The phrase “License” is not used in the Trademark Act; rather, the term is “registered user.”

Both parties benefit from trademark assignment. While the licensee gains the ability to expand its market operations by using the brand and building its name, the licensor enjoys the right to the mark in exchange for royalties.

Types of Trademark Assignment

The following are the types of Trademark Assignments:

Complete the Assignment;

In such an assignment, the second party receives full ownership of a registered trademark. The owner in this case gives to the other party all of the rights related to marking, including the rights of a subsequent transfer, the right to receive royalties, etc.

For instance, A, the owner of a brand, agrees to sell B the entirety of his mark. A no longer has any brand-related rights at this point.

Limited Assignment;

If a partial assignment occurs, the transfer of ownership^[1] is only applicable to the services or goods specified by the parties in the trademark assignment agreement.

For instance, take X, the owner of a company that sells dairy goods as well as jams and jellies. X transfers to R the rights to the trademark with regard to just dairy goods while holding onto the rights with regard to jams and jellies.

Additionally, a full or partial assignment may be made with or without goodwill.

An assignment with Goodwill

Such assignments are made when goodwill is transferred to a third party along with the transfer of value and rights associated with the trademark.

As an illustration, R, the owner of the brand “Shudh” for shoe products, sells his brand to S so that S is allowed to use it for dairy products as well as any other items it creates.

The Assignment without Goodwill;

The gross assignment is another name for an assignment without goodwill. Here, the brand’s owner limits the buyer’s rights. Such a brand cannot be applied by the purchaser to the item being used by the original owner. As a result, the buyer does not receive the goodwill associated with the trademark in relation to the goods already being sold under that brand.

For instance, P, the owner of the brand “Shudh” for dairy goods, sells his brand to Q so that Q may use the mark “Shudh” for any other items it manufactures, but cannot use it in connection with dairy products. The goodwill connected with the “Shudh” brand for dairy products is not transferred to Q in this situation, and Q will be needed to develop separate “Shudh” goodwill for any other products or services, such as restaurants, where Q plans to utilize this brand.

Advantages of Trademark Assignment in India

The following are the few advantages of Trademark Assignment: 

Get the value of your trademark;

The process of building a brand involves investing a significant amount of time, money, and effort. Owners can cash in on the value of their brand, which was previously only represented in documents, by assigning their trademark to other organizations.

The legitimate proof is the assignment agreement;

A trademark assignment agreement makes it simple to establish the assignee’s legal rights in the event of a trademark dispute. Registry guarantees that all controls are in place and trademark journals are informed of the validity of every clause contained in the agreement.

Pre-existing Brand;

The assignee benefits from operating under a well-known and established brand name. The assignee is spared the time, labour, and expense of creating brand value.

Procedure for Registration of Trademark Assignment

The following is the process by which a Trademark Assignment is accomplished:

• First, the Trademark owner has to transfer the concerned rights to the assignee.
• The trademark owner (Assignor) or assignee needs to request the registrar by filling out an application.
• The registrar will register the person as the owner of the trademark in respect of goods or services upon receiving an application from a person who is entitled to a registered trademark through the assignment of trademarks in the manner specified by the registrar.
• A trademark assignment including a change in ownership must be registered in the trademark registry.
• In the event that there is any reasonable question regarding the provided documents, the registrar may require proof as evidence.
• The registrar may decline to register the assignment in the event that there is any disagreement between the parties regarding the legitimacy of the assignment until the rights have been resolved by the court.

Conclusion 

With careful planning, the Trademark Assignment of a brand can lead to several opportunities. It gives a third party access to the brand’s legitimate owner’s rights. With the assignment, the brand lives on, and the assignor and assignee both gain from it in different ways. Trademark Assignment in India becomes cumbersome at some or other point in time Seek professional advice for Trademark Assignment. You can also reach at Bizadvisors.io for more information.

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