Trademark Assignment
A Trademark Assignment is the act of transferring ownership and associated rights, either fully or partially, of a trademark from the original owner to another entity, with or without any associated goodwill, and subject to certain restrictions. In contrast, a licensing arrangement grants limited rights related to the trademark while ownership remains with the original owner. A trademark assignment is executed through a trademark assignment agreement, while a licensing agreement is executed through a license agreement. Therefore, the content of these two agreements is considerably distinct from each other.
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Trademark Assignment in India – An Overview
A trademark is a unique expression, such as a word, slogan, photograph, logo, or graphic, that distinguishes a product or service from others in the market. It is considered an asset of the owner and can be sold, assigned, licensed, or otherwise transferred. If the owner decides to assign the trademark, they can easily do so by executing an assignment deed, indicating their intention to transfer ownership to the assignee.
Trademarks can be assigned permanently, for a limited period of time, or for a limited number of products or services. Executing an assignment deed is necessary to ensure that the assignment of the trademark is legally valid and to avoid any future legal disputes. Both registered and unregistered trademarks can be assigned, and such assignment must be recorded with the trademark registrar
How to Assign a Trademark?
In India, the ownership of a registered or unregistered trademark or service mark can be transferred to another entity through various means, including:
Complete Assignment of a Trademark: In this type of assignment, the owner of the trademark (assignor) transfers all ownership and related rights to another entity (assignee) in the same or different field of business. The assignee gains complete control over the trademark, including the right to transfer ownership, earn royalties, and more.
Partial Assignment of a Trademark: This arrangement limits the transfer of ownership to certain products or services only, allowing the assignor to retain exclusive rights to use the trademark for other products or services of their choice.
Trademark Assignment with Goodwill: This type of assignment allows for the transfer of ownership rights as well as the reputation or image-value associated with the trademark in a specific field of business. The assignee can use the trademark to identify and promote other products in the future, in addition to the products sold by the assignor.
Trademark Assignment without Goodwill: In this arrangement, the assignor restricts the assignee from using the trademark in the assignor’s field of business. Both parties can use the trademark for their respective businesses in different fields.
All types of trademark assignments must be recorded with the trademark registrar to be legally valid.
Process of Assignment of Trademark
Once a trademark has been assigned to a new owner, the assignee must apply for the assignment in the appropriate manner. The application for trademark assignment should be made using Form ™-P and can be submitted by either the assignor, the assignee, or both parties together in a joint request to register the assignee as the subsequent proprietor.
The application must be filed with the registrar of assignments within six months from the date of obtaining the proprietorship, although it may be submitted later with an adjusted fee. If the assignment is without goodwill or for a certified trademark, regulatory approval from the registrar of trademarks must be obtained within six months from the date of delivery of the assignment or any extended period allowed by the registrar.
The assignment of the trademark must be advertised in a manner and within a timeframe directed by the registrar. A copy of the registrar’s directions and the advertisement of the trademark assignment must be submitted to the office to confirm that the instructions have been followed as required.
Upon receipt of the trademark assignment application and all necessary documents, the registrar will review and register the assignee as the new proprietor of the trademark, and the details of the assignment will be recorded in the register.
Documents Required
Certificate of Trademark Registration (if any).
The assignor and assignee’s name and description.
No Objection Certificate (NOC) from the original owner of the registered trademark.
Documents required for Trademark Registration:
Trademark registration is an inherent mechanism in which a brand can be secured from undesired use and infringement. The Indian government has clarified the trademark registration method. The entrepreneurs can now quickly obtain trademark registration for their brands within a few months. Here, for the application process, there is no need for submitting original documents. A Scanned copy of the original document is enough for the application process.