Trademark Assignment in India: All ‘WH’ questions answered

What is a Trademark?

A Trademark can be any sign or symbol or a word registered under a company’s name and is used to represent its product and/or services. This Trademark is a representation of the company in the eyes of the customers and is the sole property of the company. In case of any infringement committed on the Trademark, the brand name or authenticity of the company gets compromised in the market.  Read More: Startup Registration

What is Trademark Assignment?

In some cases, a trademark can be sold, assigned, or transferred, depending upon the owner’s intention. The owner can assign the Trademark to whoever he wishes to, but there is a legal procedure to follow for such trademark transmission. This legal procedure of assignment of ownership of a trademark to another party is known as trademark assignment or trademark transmission. Here we discuss the complete details of the trademark assignment process.

What are the types of trademark assignments?

Assigning a trademark to a party can be done differently as agreed upon by the Assignor and Assignee (s). Let us look at them one by one:

1. Complete Assignment of Trademark

In this kind of assignment, the Assignor (owner of the Trademark) transfers all the Trademark rights to the Assignee (receiver of the Trademark). After this trademark transfer, the Assignor will not have any ownership of the Trademark. In this complete assignment, the Assignee will have all the Trademark rights like using its market value to sell products, rights to earn royalties under the Trademark, the right to make the further transfer of the Trademark, etc.

2. Partial Assignment of Trademark

In this arrangement, the Assignor transfers the Trademark for some specific products or services. The arrangement of such kind of assignment is subjective and is defined in the trademark assignment agreement. It can be a permanent transfer or transfer for a specific period, or trademark ownership is transferred for some specific goods or services.

3. Trademark Assignment with Goodwill 

In this assignment arrangement, the Assignor assigns the rights, entitlements, and values associated with a trademark to the Assignee, who can use the Trademark for any kind of goods or services, including the goods and services the Assignor previously used. This establishes goodwill between the Assignor and the Assignee so that the assignees can further use the Trademark for their business growth. Let us understand this with an example.

Say, A company named ‘Kesha,’ which sells shampoos and conditioners, transfers its Trademark to another company, say ABC. So the ABC company can use the assigned Trademark by Kesha to sell any product(s), including food products, etc., as well as shampoos and conditioners.

4. Trademark Assignment without the Goodwill 

In this kind of assignment, The Assignor assigns the rights and entitlements of a trademark to the Assignee to use it for the products or services that are not in use.

In case of assignment without goodwill, the Assignor restricts the usage of the Trademark to the products and services which are different from the Assignor’s products and services. The Assignee shouldn’t compete with the Assignor in the market. This restriction keeps the goodwill out of business. Read More: Section 8 Company Registration

In this case, Kesha can assign its Trademark to the company ABC only to sell food products, and it restricts ABC from selling shampoos and conditioners using its brand value.

Why should one assign a trademark to another party? 

There are various advantages of assigning your Trademark to another party. Some of them are listed below:

• The trademark assignment of your brand enables you to encash your brand’s value and earn money.
• The trademark assignee obtains an already established market brand to promote and market its product(s) or service(s) and generate revenue.
• Both the trademark owner and buyer can mutually benefit from this scheme and expand their businesses.
• Having a trademark assignment agreement enables both the owner and the buyer to establish their legal rights in case of any dispute arising after the assignment.

How can you become eligible to apply for a trademark assignment?

• You can assign a trademark to another party, even if it is unregistered. But when you file for an unregistered Trademark, there is a slight difference in the submission process. The trademark assignment form TM-16 should be used to assign an unregistered trademark. It must be filled out and submitted with the required documents. And in the case of registered trademarks, the assignment can be done using the trademark assignment form TM-23 (in case of joint request) or TM-24. Both are applicable.
• Both parties, the Assignor and the Assignee, must clearly define their agreed-upon arrangement in the Trademark Assignment Deed. The intent and consent of the Assignor to extend its Trademark to the buyer must be clearly stated.

What are the required documents for trademark assignment?

The following documents must be submitted with the Trademark assignment form to the Registrar of trademarks:

• Trademark assignment agreement between the Assignor (owner of the Trademark) and the Assignee (s) (the receiver of the Trademark).
• Registration certificate of the Trademark from the Assignor.
• No-Objection Certificate (NOC) from the Assignor.
• Proof of Identification of both the Assignor and Assignee.

What is a Trademark Assignment form?

FORM TM-P, scheduled under the Trade Marks Act of 1999, is used to assign trademarks.

What is the process of assigning a trademark in India?

The required steps are as follows:

1. Create the trademark assignment agreement clearly stating your intent and consent to the required process.
2. File the application for trademark assignment in form TM-P to the Registrar of trademarks with the requisite documents. Anyone, the Assignor or Assignee of both, can file for the application.
3. You must file for the application within six months of the date of assignment. Post this, a fee will be levied accordingly.
4. After the assessment of the application, the Registrar will designate the Assignee as the Trademark’s proprietor and record the specifications of the assignment in its registers.

What is the trademark transfer fee?

You can file for trademark assignment to the Registrar of Trademarks by visiting the premises or registering for it online.

• The application processing fee for trademark assignment is ten thousand rupees for physical filing.
• For E-filing, the application processing fee for trademark assignment is nine thousand rupees.

File for Trademark Assignment with Registrationwala

If you want to transfer the rights and entitlements of your Trademark to a party, you need to file for it with the authorities. As you know, dealing with legal gets quite taxing.

If you don’t have the necessary expertise to deal with the small legal issues and nuances during the application process, you will get exhausted.

We here at Registrationwala provide the necessary legal expertise to file for your trademark assignment application. Successfully register the Trademark under the proposed ownership. Our services include:

• Drafting the trademark assignment agreement.
• Furnishing the requisite documents.
• Filing the application with the Registrar of trademarks with the required documents.
• Dealing with discrepancies or issues arising during the assessment of your application.

So connect with us and let us know about your requirements, and we will start filing your application today itself. Read More: DPL License

To know from A to Z about the transfer of a Trademark’s title and entitlements from the Assignor to the Assignee, the receiving party, refer to this article.