A trademark may be sold, licensed, transferred, or otherwise transferred by its owner. Transferring trademark ownership from one person to another is done through the Trademark Assignment Process. The owner of a trademark may assign it to a third party or grant a license to the recipient. After the trademark is assigned, the assignee takes ownership of the trademark. In the current article, Trademark Assignment is defined along with its benefits, different varieties, trademark Assignment Procedure in India, and much more.
What is Trademark?
A trademark is the owner’s sole right to use a mark in commerce. One of the rights conferred by trademarking is the ability to transfer a trademark. In essence, a trademark is a visual depiction of a brand. Anything could be it, such as a sign, symbol, word, or phrase. However, before a corporation may use these trade names, or simply a trademark, it must be registered with the IPR authorities.
Benefits of a Trademark
The justification for trademark registration is clear. Your consumer base is informed by a trademark that the product is made by your division or business. As a result, the business that owns the trademark is required to protect it by registering it with the Authority. The trademark cannot be modified. The owner of the trademark has the right to take legal action against anyone who uses it illegally.
What is Trademark Assignment in India?
A trademark is intellectual property, and its owner has the same rights as other types of assets, including the ability to sell, license, and transfer their intellectual property. The Trademark Act of 1999 addresses trademark licensing and assignment. The process of legally transferring the trademark title from the primary owner, also known as the assignor, to the recipient, often known as the assignee, is referred to as a trademark transfer or allocation. The right to sell, license, or transfer the trademark belongs to the assignor, just like it does to any other owner of property or assets. Trademarks may be transferred using the Trademark Assignment Agreement or Trademark Licensing. The trademark assignment process is the name given to the process of changing registered trademark ownership.
First, the assignor must create and file a Trademark Assignment Agreement with the appropriate authorities in order to transfer ownership of a registered trademark to a third party. The agreement must be submitted before the assignment process may start. However, this does not exclude a third party from using a registered trademark of an established business. There is a shift in ownership of the registered brand when a trademark is assigned. However, when a trademark is licensed, the original owner still retains ownership of it and only a small number of limited rights are granted to the third party. The business goodwill may be transferred as part of this assignment or not. If the trademark is registered, the assignment must be recorded in the trademark register.
Types of Trademark Assignments in India
- Complete Assignment: As a result of this assignment, the assignee will become the sole owner of the trademark, and the assignor will no longer have any ownership interests in it. In other words, the assignor transfers the assignee’s entire rights in the registered trademark.
- Specific or Partial Assignment: A specific assignment occurs when the agreement only grants certain unique rights to use the trademark. In other words, the assignor just transfers a portion of the ownership of certain goods and services.
- Assignment of trademark with goodwill: In a “assignment with Goodwill,” the assignor of the trademark transfers to the assignee both the rights to the trademark and its value or goodwill. In the agreement, the goodwill figure will be calculated individually.
- Assignment of trademark without goodwill: This type of assignment, sometimes referred to as a gross agreement, occurs when only the ownership or rights are transferred while the assignor retains the goodwill. In this kind of trademark assignment, the assignor will limit the buyer’s rights while transferring the trademark. The assignor in this case forbids the purchaser from using the product’s brand that the assignor is already utilizing; in other words, the goodwill associated with the brand is not transferred to the assignee.
Benefits of a Trademark Assignment in India
- Instead of creating a new brand from scratch, the assignee might be vastly better off entering a market with an already well-known brand.
- By confirming the legality of each clause in the contract and announcing the assignment in the Trade Marks Journal, the Registrar ensures that all checks are in place.
- Due to trademark assignment, the assignee gains access to an existing brand’s rights.
- The trademark assignment in India benefits both the assignor and the assignee by assisting them in expanding their respective businesses and by assisting them in establishing their legal rights in the event of a dispute.
Trademark Assignment Procedure in India
- The parties must specify whether they want an assignment with or without goodwill.
- They must establish an agreement outlining their terms and conditions with the aid of a professional.
- Within six months of the date the agreement was formed, an application must be submitted to the registrar using the TM-P form and additional papers.
- The application must be promoted by the registrar.
- To check whether the registrar’s instructions have been followed correctly or not, a copy of the instruction and assignment announcement must be provided to the office of Trademark Registry.
- After examination, the assignment will be entered in the register by the registrar.
- The following essential documents were necessary for this Trademark Assignment Procedure in India:
- Trademark assignment agreement.
- Trademark certificate.
- NOC from the assignor.
- A copy of the assignor’s and assignee’s identification documents.
The process of legally transferring the ownership of a trademark from the principal owner, also known as the assignor, to the recipient, usually known as the assignee, is known as a trademark transfer or allocation. The most important phase, trademark assignment, creates a wealth of prospects for business growth. The Trademark Assignment Procedure in India is time-consuming and involves a lot of documentation. You will discover all there is to know about assigning a trademark in this blog. Assigning a trademark in India is done according to a specific process, which is something else you will discover. Therefore, we strongly encourage you to commit trademark assignments to the LegalRaasta legal adviser’s team, the most reputable trademark professionals in India. Our knowledgeable team has extensive knowledge of the difficulties involved in trademark registration. Our professionals will also make sure that the Trademark Assignment in India contract is registered and put into force lawfully. To maximize your potential upside, we will take tremendous measures. If you require professional advice or support with any trademark-related matters regarding the trademark assignment, kindly get in touch with one of our representatives.