A trademark is IP (intellectual property), the same as a physical property like land. Just like the physical property owner has a right to sell or transfer his/her property, the same goes with the owner of the trademark.
Every trademark owner who wants to transfer his/her right concerning its trademark is allowed to do so either through trademark licensing or trademark assignment in India that is governed under the trademark act, 1999. In this blog, we will discuss how one can transfer trademark ownership through trademark assignment.
Defining trademark assignment
To put it simply, trademark assignment is a process by which a trademark’s rights and ownership can be transferred to any other person. It takes place betwixt the parties only after implementing an agreement known as a trademark assignment agreement. Also, the partial agreement of the trademark is named as trademark licensing.
According to section 37 of the trademark act, 1999, the trademark assignment transfers the owner’s title, rights, and interest in a trademark or brand mark. If the trademark is registered, the assignment is needed to be recorded in the trademark register.
Types of trademark assignment
Under the complete assignment, complete rights will be transferred to the second party about a registered trademark. In this case, a trademark owner can transfer all the rights to the other person in return for royalties. The Trademark owner will give up every right on the trademark once he/she transfers the trademark via an agreement to the second party. Such as Anil, owner of BCD, sells his whole firm via an agreement to Arjun. After the transfer, Anil will not enjoy any rights concerning BCD.
Under the partial agreement, trademark ownership is transferred concerning only specific services/products as pre-decided by both the parties via trademark assignment agreement. Here, the trademark owner will be allowed to retain a few rights and limit the transfer of trademark to certain services/products only. Such as Anil, owner of the butter and bread, transfers only rights concerning bread and retains rights over the butter, then it will be known as partial agreement.
Assignment with goodwill
Under this category, the trademark owner transfers the trademark rights in addition to the value of the trademark linked with it. When the assignment with the goodwill occurs, then the trademark’s rights and values will be given to the second party to use the proposed mark related to services and products. Such as, if the ‘Mother’s brand owner that deals with dairy products sell his/her brand to A, then A can use such brand concerning its dairy products and other products that it produces which becomes an act of selling a trademark in India.
The assignment without goodwill
It is also known as gross assignment. Here, while transferring the trademark, the brand owner limits the buyer’s right to use such a brand for a product that the original owner is using. Thus, any goodwill linked to such brand concerning product being sold under such brand will not be transferred to the buyer. Such as, if the trademark owner of ‘Apple’ uses it to produce and in the marketing of mobile phones and chooses to assign it to another party without any goodwill, then the second party is allowed to use the trademark for products apart from the mobile phones.
Benefits of the trademark assignment
– Security for assignee and assignor – to conduct valid and genuine trademark assignment, a trademark assignment agreement is implemented betwixt both parties that consist assignee and assignor. It is even punishable in court in case of any disputes with providing security to both parties.
– Expansion of business helps the business expand as both assignee and assignor obtain the right to collaborate the brand with their respective businesses.
– Pre-established brand – you are not required to invest time, money, and labor to make or market your brand if you got the right on an established popular brand via trademark assignment. Assignee does not need to make a new brand or registration.
Pre-requisites for trademark assignment in India.
– Owner/assignor of a trademark should have intention and approval for trademark assignment.
– There have to be 2 parties – assignor and assignee.
– Trademark assignment has to be written.
– Assignor and assignee’s valid documents.
– Implementation of a valid trademark assignment agreement.
– Correct identification of marks.
– Proper consideration.
– Consisting transfer of trademark in goodwill.
Required documents for trademark assignment.
– NOC from the owner.
– Trademark certificate.
– Power of attorney.
– Identified documents of assignee and assignor.
– Trademark assignment agreement.
The process to obtain trademark assignment in India.
Step one – first, an application for a trademark assignment must be made by both parties, or both of them can jointly make a request.
Step two – it is crucial to submit the TM-P form by presenting all needed details of the transfer.
Step three – now, you are required to file all the requisite documents for trademark assignment to the registrar of the trademark within six months from the date of acquisition of ownership.
Step four – in this stage, the application will be processed further.
Step five – now, the applicant will have to make an advertisement for the assignment in a manner as directed by the registrar. Also, file a copy of the direction of the registrar and advertisement of the assignment in the registrar’s office.
Step six – registrar would verify the application, and after the proper verification, if the registrar is satisfied, he/she would approve the application. Nonetheless, the registrar would register the assignee as the owner of the trademark. The registrar would fill in the details of the assignment in the register.
As we have seen, it demands good planning from both parties. It opens up a lot of opportunities for both the involved parties. It also keeps the brand alive.