Assignment of Trademark

Assignment of trademark is when there is a transfer of the owner’s right, title and interest of the trademark. Such transfers can take place in the form of an assignment or merger or also an amalgamation between two entities.

Trademark Assignment is the process of transferring ownership of the trademark either with or without the goodwill of the business. One can assign a trademark through a trademark assignment agreement. The original owner of the trademark is “the assignor” and the future owner is “the Assignee.”

Benefits of Trademark Assignment

• Trademark’s value– Creating a brand name for a company involves money, time and capital. An assignor is able to encash the brand value. The Assignee is also able to unlock benefits of the brand name in the Industry.
• Exercise Legal Rights– The trademark assignment agreement secures the legal right of the assignee incase of a dispute. The Registry ensures the validity of all the clauses mentioned in the agreement before publishing the assignment in the Trade Marks Journal.
• Existing brand name– The assignee has the advantage of dealing in an already existing and established a brand name.
• Business Expansion– The Brand value will propel with the combined efforts of assignor and assignee to contribute in brand building.

Types of Trademark Assignment or Transfer

• Complete Assignment to another entity
  • The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc.
• Partial Assignment to another entity
  • The owner transfers trademark restricted to specific products or services only.
• Assignment with goodwill
  • Such assignment is when the rights and value of a trademark as associated with the product is also transferred to another entity.
• Assignment without goodwill
  • Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use the brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer.

Documents Required

• TM Certificate: Certificate of Trademark Registration (if any)
• Details of the Party: Name and description of the assignor and assignee
• NOC: No Objection Certificate from the original owner of the registered trademark

Process for Assignment of Trademark

• The assignor or assignee or both can make a joint request to register assignee as a subsequent proprietor by an application of a trademark assignment. The application is made under Form TM-P.
• Assignee must apply with the registrar of a trademark within six months from the date of procurement of the proprietorship. Some applications can filed after six months of procurement but the fee payable will vary. You can also find the amounts payable for the corresponding forms here.
• The Registrar will specify the advertisement of the trademark assignment. After which the applicant has to make the advertisement accordingly. A copy of the direction of the registrar and advertisement of the assignment must be submitted to the office to make sure that the directions have been followed.
• On the receipt of the trademark assignment application and documents required, the registrar after perceiving satisfied shall register the assignee as the proprietor of the trademark. The registrar records the specifications of the assignment in the register.

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