Trademark Assignment Understanding the Procedure in India

In this 21st century, where businesses always keep an eye on what their competitors are doing, it becomes important to protect intellectual property like designs, symbols, artistic works, etc. It can be done by obtaining Intellectual Property Rights (IPR) such as Trademarks, Copyright, Patent, etc. Trademarks are popular IPRs in India and can be transferred or assigned by their owner to another person or organization. In this article, we will discuss the meaning of trademark assignment and its process along with other aspects regarding Trademark Assignment in India.

What is a Trademark?

A trademark is one of the Intellectual Property Rights. It is a sign that is used to differentiate the symbol, design, name, phrase, logo, color, shape, etc. of one brand from that of the other brand offering similar products or services.

In simple words, a trademark helps us to identify the goods and services of a particular brand. For example, if we see a bitten Apple logo on any electronic product, we easily recognize that it is a product of the Apple company.

Definition as per The Trade Marks Act, 1999

According to the Trade Marks Act, of 1999, a trademark means a mark that can be presented graphically and that can be used to differentiate the goods or services of one person from that of others. It may include packaging, shape, the color of goods, or their combination.

Is Trademark Registration Compulsory in India?

Registration of a trademark is not compulsory in India. However, it is always advisable to register the trademark. Registration gives several legal rights to the owner of the trademark including the right to protect it from infringement. The owner of a trademark is also known as a proprietor.

Register your trademark now with the help of our experts! 

Meaning of Trademark Assignment

When the owner or the proprietor of a trademark transfers the rights and ownership of the trademark to another person, it is known as Trademark Assignment. In other words, trademark assignment is the transfer of the owner’s title, rights, and interest in a trademark.

The party who transfers the ownership is called the assignor and the party to whom it is transferred is called the assignee.

Who has the power to Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 provides that a person whose name is entered in the register of trademarks as a proprietor shall have the power to assign the trademark. However, it shall be subject to the provisions given under the act.

Therefore, the assignment of trademarks is legally allowed in India.

Types of Trademark Assignment

The ways in which trademarks can be assigned are as follows:

Complete Assignment

Under complete assignment, all the rights in relation to a trademark such as the right to use the trademark exclusively, right to earn royalty, right to further assignment, etc. are transferred to another person. Therefore, the proprietor does not retain any rights with him.

For example, ‘X’ owns a brand named ‘Dominos’. If he completely assigns the trademark ‘Dominos’ to another person ‘Y’ by way of an agreement, it is a case of complete assignment. After such an assignment, X will not have any rights in relation to the brand ‘Dominos’.

Partial Assignment

Partial assignment means the transfer of trademark ownership with respect to specific products or services as decided in the agreement.  

For example, ‘A’ owns a brand named ‘Nike’ that is used for footwear as well as clothes. If he assigns the brand rights related to clothes to ‘B’ and retains the rights with respect to footwear, it will be a case of partial assignment.

Assignment with Goodwill

In general, the owner of the trademark transfers the rights for the products or services for which the trademark is used by him. But in the case of an assignment with goodwill, the value of the trademark is also transferred. It means the assignee can use the same trademark for other products that he manufactures.

For example, ‘ABC’ is the proprietor of the brand ‘Meta’ which is used for technologies. If ABC assigns the trademark Meta to another person ‘X’ with the goodwill of the business, X can use the trademark for other products as well that he manufactures.

Assignment without Goodwill

Under assignment without goodwill, the owner of the trademark restricts the assignee from using the trademark for the same products that are manufactured and sold by the owner himself. Therefore, in this case, the goodwill attached to the brand product sold by the owner is not transferred.

For example, ‘X’ is the owner of the brand ‘Crocs’ that is used for footwear. If X assigns the trademark Crocs to another person ‘A’ without the goodwill of the business, A can use the trademark for any other product except footwear.

Trademark Assignment Agreement

A trademark is generally assigned by way of an agreement between the parties. The following are the essentials of a trademark assignment agreement.

• As per Section 2(1)(b) of the Trade Marks Act, 1999, ‘assignment’ means an assignment that is in writing by the act of the concerned parties. Therefore, the agreement shall be in writing.
• There must be a minimum of two parties to the agreement i.e., the assignor and the assignee.
• It shall mention the ‘mark’ which is transferred.
• The date and place of execution of the agreement shall be mentioned.
• The consideration paid by the assignee to the assignor in exchange for the trademark assignment must be mentioned.
• The agreement shall specify the date from which the assignment will be effective.
• It shall be mentioned whether the assignment is with goodwill or without the goodwill of the business.
• In the non-operative part of the agreement, it shall be specified that the assignor is the legal owner of the trademark and that he has the right to assign such trademark.
• It must contain the purpose of the assignment or transfer of the trademark.
• The agreement shall not adversely affect the rights of the trademark owner.
• If the agreement is to operate in a particular geographical boundary, then such limits shall also be mentioned.
• In the case of partial assignment, the name(s) of the product or service shall be mentioned.
• It shall state that the assignee will have the right to use and further transfer the trademark along with the right to sue for infringement.
• It should be mentioned whether the agreement will be binding on the legal heirs of the parties or not.
• The agreement may include an arbitration clause for dispute resolution.
• The agreement shall be signed by the parties and duly witnessed, stamped, and notarized.

What documents are required for the Trademark Assignment?

The following documents are required for trademark assignment –

What is the Procedure for Trademark Assignment?

Following is the procedure for the assignment of a trademark in India –   

1. Agreement – The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.

In addition, it shall be duly witnessed, stamped, and notarized.

2. Application – After execution of an agreement, an application shall be made in Form TM-P for the transfer of the trademark along with fees. The application can be made either by the assignor or by the assignee or jointly by both of them.

Such an application shall be filed within six months from the date of the agreement. Also, the documents mentioned above shall be attached to the application.

Note – For all the processes related to the assignment of a trademark, Form TM-P is used.

3. Advertisement and Submission – The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.

Further, the copy of the assignment and direction of the registrar shall be submitted to the office of the registrar of trademarks.

4. Registration – If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Note – It is the responsibility of the registrar to dispose off the application of assignment within three months from the date of application.

Does the process seem easy? Well, it is not. It takes time and above that, the documentation should be proper. Take the help of our experts and ensure the seamless assignment of your trademark!

Fees for Trademark Assignment in India

The following fees are applicable for the assignment of trademark in India and for other related purposes.

Benefits of Trademark Assignment

Following are the benefits of Trademark Assignment.

Established Brand Image

With the help of trademark assignment, the assignee gets the benefit of the brand image that is associated with the trademark. However, he is not required to put in extra effort to build a brand image among the customers.

Value of Trademark or Brand

Through trademark assignment, the assignor gets an opportunity to realize the value of his trademark or brand in monetary terms. Therefore, it is a good exit opportunity for the assignor.

Business Expansion

Trademark assignment helps the assignor as well as the assignee in the expansion of their respective businesses. Assignors can invest the money that he gets from trademark assignment into their business. On the other hand, the assignee can use the trademark for entering into new product lines.

Protection of Legal Rights

The Assignor and the assignee can protect their legal rights by way of entering into a written trademark assignment agreement. Also, it is helpful in the resolution of disputes between the parties.

Are there any restrictions on the Trademark Asssignment?

Yes, the Trade Marks Act, of 1999 puts the following restrictions on trademark assignment.

Restriction on the Creation of Multiple Exclusive Rights

Section 40 of the Trade Marks Act, 1999 restricts assignment that results in the creation of multiple exclusive rights. It means a trademark cannot be assigned in a manner that more than one person gets the exclusive right in relation to –

• Same goods or services; or
• Goods or services that are the same in the description; or
• Associated goods or services

Restriction on the Creation of Exclusive Rights in Different Parts of India

Section 41 of the Trade Marks Act, 1999 restricts assignment that results in the creation of exclusive rights in different parts of India. It means a trademark cannot be assigned in a manner that it is used simultaneously in different parts of India in relation to –

• Same goods or services; or
• Goods or services that are the same in the description; or
• Associated goods or services

Conclusion

Trademark assignment is beneficial for both, the assignor and the assignee. However, it is important to draft the agreement carefully keeping in consideration the rights of both the parties and the restrictions imposed by the Trade Marks Act, of 1999. Also, the process of assignment shall be carried out properly.

Therefore, it is always advisable to seek the help of professionals. We at Registration are dedicated to assisting you in the seamless assignment of your trademark. Our Experts with 13+ years of experience can also help you with registration and renewal of your trademark.

Reach out to us at +91 8600544411 via Call/ WhatsApp or write to us at support@registrationarena.com for more information.