Trademark Assignment

Trademark Assignment Process in India

In India, there are two ways to assign trademark rights after trademark registration or even for unregistered trademarks. (1) Trademark Assignment by a written agreement between the parties; or (2) Trademark Assignment by operation of law. A written agreement for the trademark assignment is the most common way to assign trademark rights. The trademark assignment agreement should state the names of the parties involved, the trademarks that are being transferred, and the consideration (if any) that is being paid. It is important to note that an assignment agreement must be signed by both the assignor and the assignee in order to be effective. If there is no written agreement, then trademark rights can still be assigned by operation of law. This happens when there is a change in ownership or control of a business that uses a registered trademark. In such cases, the government will automatically update its records to reflect the new owner/controller of the mark. Trademark Assignment is the process where the ownership of the mark is transferred from one party (the registered or unregistered proprietor of the mark) to another party. To put it in simple terms, when the assignment of a trademark takes place, there is a change in the ownership of the registered brand. In the case of registered trademarks, the same has to be recorded with the registry, where a change of ownership has to be recorded.

Statutory Provisions of the Trademark Assignment

Section 37 of the Trademark Act, 1999 gives a brief outline of the trademark assignment in India. As per the provision, the registered proprietor of the trademark can assign the trademark, with or without the goodwill of the business in which the mark is used, to any person entitled by the law. Such assignment can be made in respect of goods and services, in part or full, in which the trademark is registered, Interestingly, the Act also provides for the assignment of the unregistered trademarks, with or without the goodwill of the business.

Types of Trademark Assignment in India

Complete Assignment of trademark In a complete assignment of trademarks, the owner of the trademark transfers the entire ownership of the trademark to another party, including royalties and any subsequent transfers. As an example: Mr. A is the owner of the brand XYZ and he wanted to sell the brand to Mr. B. An agreement between A and B allows A to assign his rights vested in the trademark XYZ completely to B. A will no longer own any rights to the ABC brand after this transfer. Partial Assignment of trademark In the partial assignment of trademarks, the owner of such trademark transfers only certain services or goods and retains the rights of other goods and services which are not covered under the assignment agreement. Ownership is transferred only with specific goods or services and not with other kinds of property. For example, A is the proprietor of a brand ‘XYZ’ used for ice creams and bakery products. A assigns the rights in the brand ‘XYZ’ with respect to only bakery products to Y and retains the rights in the brand ‘XYZ’ with respect to Ice Cream.

Documents Required for the Trademark Assignment agreement

The following documents are required for the trademark assignment.
  • TM-P Form along with the registered Power of Attorney
  • Proof of Ownership of the trademark
  • Stamp Duty as applicable

Process of trademark assignment in India

In India, a trademark can be assigned in two ways: (1) by way of an outright sale and (2) by way of a license. In the case of an outright sale, the owner of the mark sells it to another entity and divests all rights and title to the mark. In the case of a license, the owner of the mark licenses it to another entity and retains some rights and title to the mark. This article discusses only assignment by way of an outright sale. The following are the steps for assignment of the trademark in India: 1. To start with, both the parties involved in the trademark assignment transaction – i.e., the seller and buyer – need to enter into an agreement setting out all relevant terms and conditions for the transfer of ownership (the “Assignment Agreement”). This document will govern how ownership is transferred between them along with other matters such as liabilities post-assignment etc. The first step is to prepare a deed of assignment of the trademark which sets out the terms of the transaction. The deed must be signed by both parties and should include: – The name and address of each party involved in the transaction – The trade mark(s) being assigned – The date on which the assignment is taking place – A description of the goods or services in relation to which the trade mark is registered – The consideration (if any) for the assignment of trademark assignment agreement 2. Once this is done, both the trademark assignor and the trademark assignee will need to sign and submit Form TM-P to the Indian Trade Mark Registry. The form can be filed online or through mail. 3. If no objection is raised within 3 months, the Trademark Office will issue a Certificate of Assignments confirming the transfer. The assignment of the trademark in India generally follows these steps: 1. The trademark owner will need to provide an assignment deed or agreement to the Indian Trademark Registrar. 2. Once this is done, both the trademark assignor and the trademark assignee will need to sign and submit Form TM-P to the Indian Trade Mark Registry. The form can be filed online or through the mail. 3. After submission, the Registry will process the application and issue an acknowledgment receipt. 4. If there are no objections from other parties, then the assignment will be registered and published in the Trademark Journal. Where a person desires to transfer or assign the trademark rights in favor of another person, then he shall apply the same in the prescribed manner to the trademark registry under the concerned form for registration of the title of ownership in his/her name. 5. Upon receiving the application, the registrar will scrutinize the document, check for the proof of title, and make the ownership changes in the register. The Register will register him/her as a new owner or proprietor of the trademark in respect of goods and services of the business concerned. The details of the assignment and all the particulars associated with the Assignment will be entered in the register of trademarks

Forms and Fees

The Fee to register a trademark assignment/ subsequent proprietor through trademark e-filing facility is Rs. 9000 and Rs.10000 in case of manual filing. Note: this is the official government fee and does not include professional fees and other ancillary charges.

Duration

An application for assignment of trademark is disposed of within 3-6 months from the date of filing of trademark assignment form.

Disclaimer

The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.
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