Trademark assignment is defined as the part of transfer of ownership of a trademark from one party to another. Any Trademark can be assigned when the ownership rights of such trademark or brand, is transferred from one owner or party to another person. However, such an assignment of a trademark can be done 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. A Trademark 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.
Categories of Trademark Assignment
Various types of Trademark Assignment are accepted in India. On the basis of need and requirement, the parties would come under specific type and accordingly the Trademark Assignment agreement would be drafted. Following are the kinds of Trademark assignment in India:
- Complete Assignment
- Partial Assignment
- Assignment with goodwill
- Assignment without goodwill
Complete Assignment of Trademarks are such assignment where the owner or the author/ brand transfers all its rights to another entity. Such transfer of rights include right to further transfer, right to earn royalties and many more. In such cases, the owner cannot retain any right with themselves.
For example, A, the owner of a brand, sells his Trademark completely through an agreement to B. After such transfer, A does not have any rights with respect to the brand.
Partial assignment are those type of assignment by which the transfer of ownership is limited to certain categories of services or products as parties have agreed to mention in Trademark assignment agreement.
However, if the author of a trademark named “xyz” mentions in the trademark assignment agreement that the assignee can use the trademark for only products that are for the consumption of animals only.
Then such trademarks cannot be used for any other goods and services except for products for animal consumption.
Assignment with Goodwill:
Trademark Assignment with goodwill is such assignments which are made when value and right, both the things associated with the trademark are transferred to the third party with goodwill.
Forms and Fees:
In order to record an assignment, an application of a registered trademark can be made through the following Forms:
- Trademark which are pending:
- Form TM-M is required to be filed by the applicant. Fee Required- INR 900 for each mark.
- Trademarks which are registered:
- Form TM-P is required to be filed by the applicant. Fee required for filing of such trademark is INR 9000 for each mark to be assigned.
Assignment without Goodwill:
The owner of the brand in such assignment does not grant the complete right to the buyer. Assignments without goodwill are also called as the “gross assignment”.
Restrictions Mentioned Under Trademark Act, 1999
As per the provisions laid down under the Trademarks Act, 1999 there are certain restrictions which can be put on the assignments of any registered Trademark. They are mentioned below:
- Use of trademark by multiple people in different parts of the country
- Creative rights cannot be created for more than one person in respect of the same goods and services.
Meaning of Trademark License
Trademark License is such license through which a trademark owner (Licensor) has the right to grant permission to another owner (License) to use a particular trademark on certain terms and conditions. However, trademark licensing can only be accepted when the licensor or the owner of the trademark remains in complete control of the nature and quality of the goods or services.
Benefits of Trademark Assignment
Some of the benefits of the Trademark Assignment are mentioned below:
- Valuation of Trademark:
Whenever a brand is created it requires a lot of money, time and also hard work. Thus, by the process of assignment of Trademark to the third party the owners or the authors of the trademark can get in cash the value of the trademark.
- Trademark Assignment Agreement is a valid proof:
Trademark assignment agreement can act as a valid proof or evidence in case any situation or dispute relating to the assignment of trademark arose. The legal rights of the author or the owner of the trademark are well protected through such assignment agreements.
- Already established brand:
The author of a trademark enjoys the benefit of dealing in an already existing trademark.
Methods to Draft a Trademark Assignment Agreement
Drafting of a Trademark Assignment Agreement is considered to be the most important and vital step in the procedure of trademark agreement. This process should always be done under the guidance of a professional. Following are some of the key elements which must be kept in mind while drafting of trademark assignment agreement:
- The effective transfer date
- Trademark to be assigned
- Assigner along with the assignee must be mentioned clearly
- Warranties to be issued
- Signature of both the parties
- Public notary
Registration of Trademark Assignment
In order to register a trademark assignment with the registry following procedure must be followed by the authority:
Assignment of an Unregistered Trademark:
As mentioned under section 39 of Trademarks Act, 1999 any unregistered trademark can be further be allotted with or without the goodwill. The request for such procedure can be made under Form TM-16.
Assignment of a Registered Trademark:
Section 38 of the Trademark Act, 1999 explains about the transmission of the trademark with or without the goodwill. Such assignment for trademark can be made under Form 23 and 24 of the Trademark.
Procedure for Trademark Assignment
- The first step for the procedure of trademark assignment is to make an application for the assignment either by the assignee or by the assignor or both of them.
- The application made for such process should mention all the details of the transfer under form TM-P.
- After the completion of the application the same must be filed with the Registrar of the Trademark.
- This must be completed within the period of 6 months of proprietorship acquisition.
- Specification regarding the advertisement of the trademark assignment must be given by the Registrar.
- Copy of such advertisement for trademark assignment made along with a copy of the Registrar’s direction on it should also be submitted.
- After going through all the documentation, the Registrar shall officially transfer the trademark from one owner to another.