Trademark Assignment
Registered trademark brand is always and asset for and company / individual. Proprietor of trademark can transfer the registered brand through trademark assignment like their physical properties.
Trademark Assignment means transferring benefits, right, interests, title to other person using trademark assignment. The receiving party is called the assignee and transferring party is called assignor. Both registered and unregistered brand can be assigned with or with goodwill of business in writing using section 2(1) (b) of Trademark Act 1999.
Overview
As per section 37 of the trademark Act 1999 the person or entity registered has proprietor of mark has
right to transfer ownership of such mark and receive consideration.
Types of Trademark Assignment
Complete Assignment
Where Proprietor of mark transfer all right of trademark to other person including the rights to earn royalty against the mark and other further transfer rights is called complete assignment.
Partial Assignment
Where proprietor of the mark transfer the right registered brand with specific products and services which extends to the limits of rights are called has partial assignment.
Assignment with and without Goodwill of Business
The mark can be used by assignee into any class of goods and services in with goodwill and business. The mark cannot be used by assignee into other class of goods and services in which as assignor is already using.
Documents Checklist
In regard to the Trademark Assignment, following documents are needed:
Assignment Deed
Affidavit of the Assignor
ID Proof of the Assignor
Photo of Directors, Partners, Directors or proprietor as applicable.
Benefits of Trademark assignment
Creating a brand Image and goodwill in market exhaust lots of funds of company. Thus many companies legalize their intellectual property of their brand. Few important benefits of trademark assignment are mentioned below.
Monetization of brand
Trademark assignment helps in monetizing funds that has been exhausted in creating a brand.
Easy Brand Building
The assignee of mark also has no need to utilize more funds and marketing and securing the brand value.
Maintenance of IPR
The Assignment of trademark helps in maintenance of intellectual property in terms of maintaining the registration of same mark.
Expansion of business
The Assignment of trademark can helps into and expansion of business into similar industry and market.
Owner enjoy various rights
In dealing with already existing registered brand the owner of brand enjoys various benefits.
Act has Valid Proof
The Assignment of trademark can act has valid proof in the case of any trademark disputes arose in future. The documents of trademark assignment can be utilized and legal proof in such disputes.
Procedure of Trademark Assignment
Step – 1: File an Trademark Assignment Application
The Application of Trademark Assignment can be filled either by assignor or assignee or both of them.
Step-2: Submission of Forms with details and supporting Document
The TM-P Application should be filled with all the details and documents along with all certified
Step-3: Applying Against Registrar of Trademark
Once the application of trademark assignment is ready same to be submitted within 3 months from and date of trademark acquired from proprietor of registered mark. The application will specifically go through two important steps. A. To notify both the parties about assignment of trademark b. To be called to provide the supporting documents and details in case of any queries.
Step-4: Direction from Registrar of trademark
The Direction from registrar of trademark becomes mandatory in case of trademark assignment with goodwill before expiry of 3 months. In some cases it may extend.
Step-5: Advertisement of brand
The Applicant has to make an advertisement along with copy of registrar direction and same to be submitted.
Step-6: Transfer of brand ownership
Once the registrar satisfied with all the necessary requirement and documents he/she shall officially transfer the owner right from assignor to assignee.
FAQ's
Answer: A trademark assignment happens when the power rights of a trademark or brand are transferred from one party or proprietor to another person.
Answer: Yes, an assignment of a trademark can be done with or without the goodwill of the business.
Answer: Yes, in the case of a registered Trademark, it’s mandatory to get such an assignment recorded in the Register of trademarks.
Answer: An existent can transfer or assign his/ her trademark through deeds, agreements, etc.
Answer: Yes, its obligatory that a Trademark Assignment must be properly written, notorised, stamped, and has the correct value or denotation.
Answer: One can conduct the process of a Trademark search or TM search to know whether commodity is formerly trademarked or not.
Answer: The two main advantages of trademark assignment in India are Unlock Value, and it acts as a Legal substantiation in the eyes of the law.
Answer: The different types of Trademark Assignment Agreement are Assignment and Transfer Agreement; Assignment of Intellectual Property Rights Agreement; Intellectual Property Assignment; Transfer of Trademark Rights; and Trademark Purchase and Trademark Assignment Agreement.
Answer: The introductory rudiments of Trademark Assignment Agreement in India are Effective Date; Details of Trademark; Assignor; attorney; guaranties; Consideration; Autographs; and Notary Public.
Answer: In both registered and unrecorded trademark assignment, the attorney must apply to the Registrar within a period of 6 months.
