What is the Trademark Assignment?
Trademark assignment is an intellectual property and like any other asset, the proprietor of a trademark has the power to sell, license or transfer the owned intellectual property. Such a transfer can be made through Assignment or through licensing.
When a trademark is assigned, there are some variations in the ownership of the registered brand. But when it’s licensed, the benefits in the trademark continue to vest with the buyer but only a few qualified rights are given to the third party. This assignment of trademark in india can be done with or without assigning the business goodwill. In case of a registered trademark, such an assignment is required to be recorded in the Register of a trademark.
Benefits of Assignment on Trademark
Unlock Value
Through an trademark assignment deed, the brand owner can unlock the value of the brand owner and can unlock the value of the brand, which, until this point, only has value on paper. The assignee, on the other hand, could be significantly better off beginning a market with a previously well-known brand, rather than developing a new one entirely.
Valid proof
In case of a dispute associated with the assignment, legal rights would quickly be established through the action. The Registrar assures that all the checks are in place by testing the validity of all the clauses in the trademark assignment deed and declaring the assignment in the Trade Marks Journal.
Requirements for Trademark Assignment
Assets to be assigned
- Pending trademark applications.
- Issued trademark registrations.
- Goodwill.
- Associated marks, applications or registrations.
- International registrations.
- Common law trademarks.
- Names of living or deceased individuals.
- Domain names, email accounts, social media or website accounts, etc.
Execution requirements
- Signatories.
- Witness.
- Notarization.
- Legalization.
- Execution date and place.
- Power of attorney.
What is the Process of a Assignment of Trademark in India?
Assignee, the person who becomes qualified by the assignment of a certified trademark should apply for the assignment on trademark in the designated manner.
- An application of a trademark assignment shall be made in Form ™-P by the assignor or assignee or both can make a joint request to register assignee as a subsequent proprietor.
- Apply with the registrar of a assignment within six months from the date of procurement of the proprietorship. The application can be filed later, but the requisite fee may vary accordingly.
- In case of assignment without goodwill or assignment of a certified trademark, the regulation from the registrar of trademarks is needed before the expiry of six months from the date on which assignment is delivered or within the extended long period which is provided by the registrar.
- Advertise the assignment on trademark such a manner and within such a period as the registrar may direct.
- A copy of the direction of the registrar and advertisement of the trademark assignment must be submitted to the office to make sure that the directions have been followed accordingly or not.
- On the receipt of the assignment of trademark application and documents required, the registrar after perceiving satisfied shall register the assignee as the proprietor of the trademark and the specifications of the assignment to be recorded in the register.
Pre-Requisites for Assignment of Trademark
There are a few pre-requisites that must be met before a trademark can be assigned. These include:
- The trademark must be registered with the relevant trademark office.
- The trademark must be in use.
- The assignment must be in writing and signed by the owner of the trademark.
- The assignment must be recorded with the relevant trademark office.
Who can Assign a Trademark?
The owner of a trademark can assign it to another person or entity. The owner can also assign part of the trademark, such as the right to use the trademark in a specific geographic area.
How to Assign a Trademark?
Assignment of trademark is the transferring of proprietary rights within the property of the businessman. The way within which assignment is often created square measures as follows:
Complete assignment of logos
In a complete trademark assignment, the owner of the trademark transfers all the rights with the relation to the trademark, together with the transfer of the rights like the right to any authorities, earn royalties, etc., to a distinct entity.
For instance, let’s take” A” as the owner of “XYZ”, sells his whole association through an agreement to B. After this, A doesn’t maintain or get any rights with relation to “XYZ”.
Partial assignment of logos
In a partial assignment, the transfer of possession is restricted to specific or service solely. The owner could maintain and support the right to any transfer, to earn royalties etc.
Moreover, for instance, the owner of a tea and a biscuit whole transfer proprietary rights solely with relation to the tea whole retains the rights over the biscuit whole, this process is known as the partial assignment.
Restrictions on Assignment of Trademark
There are a few restrictions on the assignment of a trademark. These include:
- The assignment cannot be made if it would violate the rights of a third party.
- The assignment cannot be made if it would be contrary to public policy.
- The assignment cannot be made if it would be fraudulent.
How to Assign a Trademark
To assign a trademark, the following steps must be taken:
1. The parties to the assignment must agree on the terms of the assignment.
2. The assignment must be in writing and signed by both parties.
a. The assignment must be recorded with the relevant trademark office.
The assignment agreement should include the following information:
- The names and addresses of the parties to the assignment.
- The trademark that is being assigned.
- The terms of the assignment, such as the consideration being paid for the assignment.
- The date of the assignment.
The assignment agreement should be recorded with the relevant trademark office. This will ensure that the assignment is enforceable against third parties.
Documents Required for Trademark Assignment in India
- 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.
Individuals and Sole Proprietorship
Any individual can easily register a trademark assignment in india. There is no provision for forming a legal entity or business entity to register a assignment of trademark. Additionally, the documents required to register a assignment in trademark in the name of a proprietorship are the same as that of an individual as follows:
- Copy of the logo, preferably in black & white in enough. In case the logo is not provided, the trademark application can be registered for the word.
- The signed Form-48. It is an authorization and support from the applicant to a Trademark Attorney for registering and filing the trademark application on his/her behalf.
- Identity proof of the individual or proprietor.
- Address proof of the individual or proprietor.
Assignment of Trademark With Goodwill
This plan encourages and supports the exchange of both proprietorship rights and the picture esteem combined with a trademark assignment in an appropriate field of business. After such a task sequence of action, the preferred one is empowered to utilize the market reputation of the assignment of trademark for understanding and developing some other results of worry in the future, notwithstanding the item sold by the assignor.
Assignment of Trademark Without Goodwill
Under this design, the assignor or seller of possession or property rights defines the appointee or customer from utilizing the said trademark assignment in the matter of the assignor’s items. This indicates a comparable trademark is utilized by both the assignor and the trust after such a course of action, for working collectively in different fields. This kind of trademark task is called the gross trademark task.
The owner of a trademark can be an individual, a company, or another legal entity.
Types of trademark assignment
There are two main types of trademark assignment:
- Assignment of all rights: This is the most common type of assignment. It transfers all of the owner’s rights in the trademark to the assignee.
- Assignment of limited rights: This type of assignment transfers only certain rights in the trademark to the assignee. For example, the assignment may only transfer the right to use the trademark in a specific geographic area or the right to use the trademark in connection with a specific product or service.
What are the Restrictions on Assignment of a Trademark?
There are a few restrictions on the assignment of a trademark. These restrictions include:
- The assignment cannot be made if it would violate the rights of a third party.
- The assignment cannot be made if it would be contrary to public policy.
- The assignment cannot be made if it would be fraudulent.
Penalties for Non-Compliance with a Trademark Registration
The penalties for non-compliance with a trademark registration vary depending on the jurisdiction. In India, the penalties can include:
- A fine of up to INR 100,000 (about US\$1,300).
- Imprisonment for up to six months.
- A combination of fine and imprisonment.
