Trademark Assignment is a written document that authorizes a registered proprietor/user of a trademark to assign/transfer the trademark and to give authorization for any consideration for such assignment. The assignor transfers a registered word, phrase, and symbol or design to another owner. Trademark Assignment takes place when there is a transfer of the owner’s power, title, and interest concerning the trademark.
In short, Assignment and Transmission of Trademark is a process in which ownership of the trademark is passed from one person to another with full or partial rights depending on the terms and conditions of the owner of the trademark. Registered and Unregistered Trademarks are assigned and transmitted from one person to another with or without the goodwill of the business concerned. A person can assign the trademark through a trademark assignment agreement.
There are various ways of assigning the trademark:
Complete Assignment
It means that the transfer of all rights together with rights to royalties, rights to further transfer, etc from one individual to the other.
Partial Assignment
It means that the transfer of ownership is restricted or specified to certain products or services.
Assignment With Goodwill
It means to transfer & assignment of the trademark is done along with all the rights & values associated with the trademark from one person to the other.
Assignment Without Goodwill
It means that the transfer of trademark by the owner in such a manner it can be utilized for any other purpose except the original one.
Here, the Current Owner or transferring party is known as the "the Assignor", and the future owner and the receiving party is known as "the Assignee".
Note: An Unregistered Trademark May Be Assigned With Or Without The Goodwill Of The Respective Business.
What are the consequences of not using the Trademark Agreement?
Without the Trademark Assignment, there will be a dusky vision on the record who currently owns the mark. Hence, the following are the consequences of not using the agreement-:
- Loss of Time
- Loss of Money
- Loss of Goodwill
What Aspects should get covered under the Trademark Assignment Agreement?
The Trademark Assignment Agreement should cover the requisite information, which is as follows:-
- Owner of the Trademark and new owner of the Trademark
- Trademark consists of and any related association with the registration.
- Matters of Disputes
- Trademark owner has the right to assign the mark and associated goodwill
- Date of trademark transferred to the new owner officially
- Payment of Consideration the assignee pay to the assignor.
What are the Benefits of Trademark Assignment?
Designing and marketing the trademark can be very draining for the company’s fund. So, the business decides to assign the trademark and legalize the intellectual property. There are various benefits of Trademark assignment, which are mentioned below-
1. Monetization of Brand
Monetize the value of your trademark and enjoy the fruits of the time & investments done for creating the brand.
2. Easy Brand Building
The assignee is also benefitted as he/she would not have to work on brand building.
3. Maintenance Of IPR
Trademark assignment helps in the maintenance of the intellectual property in terms of maintaining registrations of the same.
4. Owner Gets The Value Of The Trademark
Brand creation, which requires a lot of investment, time, and also hard work. Thus, the Trademark assignment helps the author of the Trademark in getting the cash value of the Trademark.
5. Acts As A Valid Proof
Trademark assignment can act as valid proof in case of any dispute relating to the assignment of trademark arose. The legal rights of the registered trademark owner are well protected through such agreements.
6. Owner Enjoys Various Benefits
The owner of a trademark enjoys the various benefit of dealing in an already existing trademark.
7. Expansion of Business
Trademark assignment helps in the expansion of the business in the similar market of the industry.
What Documents/Checklist is required for the Trademark Assignment?
Below mentioned documents are required for Trademark assignment, which are as follows:-
- Certificate of Trademark registration.
- Particulars (Identity and address proof) of the assignor and assignee.
- NOC from the original owner of the registered trademark.
- Description of trademark assignment with or without goodwill.
- Copy of advertisement along with a Registrar’s direction.
- Signatories and Witness.
- Notarization.
- Proof of Execution date and place.
- Power of Attorney
What are the Restrictions on Assignment of a Trademark?
Certain restrictions are required to be kept in mind while applying for Trademark Assignment, which is as follows:-
- Restriction on an assignment where multiple exclusive rights would be created.
- Restriction on an assignment where exclusive rights would be created in different parts of India.
What is the Procedure for the Trademark Assignment?
Step 1: Make An Application
The very first step is to make an application for the Trademark assignment either by the assignee or the assignor or both of them.
Step 2: Submission Of Requisite Forms And The Document
The applicant shall specify all the details (original copy of duly certified documents) of the transfer and be made under Form TM-P.
Step 3: Applying The Registrar
Once the application is submitted, file the same with the Registrar of the trademark within 3 months of acquisition of proprietorship. It will specifically go for two important steps, which are:-
- Notify the applicant regarding the assignment. or
- Call to provide proof if he has some doubts/errors.
Step 4: Direction From The Registrar
When there is a trademark assignment with goodwill, the direction from the Registrar of a trademark is mandatory before the expiry of 3 months. However, it can be extended.
Step 5: Advertisement
The applicant has to make the advertisement as specified by the registrar. Moreover, the copy of the advertisement along with a copy of the Registrar’s direction should also be submitted.
Step 6: Transfer Of Ownership
Once the Registrar is satisfied with all the requisite documentation, he shall officially transfer the trademark from the assignor to the assignee.
Note- The name of the Assignee is to be registered as a new proprietor in the Register. The assignee can then use the trademark as per the terms of the Trademark assignment agreement.
What are the Penalties for Non-Compliance with a Trademark Registration?
If an individual for any reason falsely represents an unregistered trademark as registered related to any products or services; then the person by law is punishable with imprisonment for a term which may extend to 3 years or with a fine, or both.
What do you know about Trademark Assignments of Unregistered/Registered Trademark?
(i) Assignment Of The Unregistered Trademark
Section 39 stipulates that an unregistered trademark could also be assigned with or without the goodwill of the business involved.
(ii) Assignment Of The Registered Trademark
The registered trademark can fully or partly assign with or without the goodwill of the business to another entity.
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