A Trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises and may include shape of goods, their packaging and combination of colours, which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks.
A trademark can be easily assigned from one authorized person/entity to other person/entity. If a person wants to transfer his/her trademark or wants to shift the ownership of the trademark, then it can be done easily with a Trademark Assignment. Trademarks can be transferred permanently or for a limited period of time. A proper agreement should be undersigned in such cases to avoid any further legal issues. You have authority to assign registered or unregistered trademark. You need to apply to the Registrar in such cases.
Benefits of Assignment of Trademark in India
Get your trademark’s value
Brand creation involves a lot of money, time and hard work. With the assignment of Trademark in India, the trademark owner(s) can encash the value of a brand which until now existed only on papers. The combined efforts create more value and the assignor can always put appropriate restrictions.
Assignment Agreement is Valid Proof
In case of any trademark-related dispute, the legal rights of the assignee would easily be established through the trademark assignment agreement. The Registry ensures that all the checks are in place by examining the validity of all the clauses mentioned in the agreement and publishing the assignment in the Trade Marks Journal.
Pre-established brand name
The assignee has the advantage of dealing in an already existing and established a brand name. The time, efforts and investment for creating brand value are saved for the assignee.
Expansion of business
In the case of licensing, the assignor’s business increases as more vendors join to contribute in brand building. The brand value will propel with the combined efforts of assignor and assignee.
How can one assign a trademark?
Assignment of an unregistered mark
Section 39 stipulates that an unregistered trademark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.
Assignment of a registered trademark
Section 38 stipulates that trademarks can be either assigned in full or transmitted in part, with or without the goodwill of the business. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks.
Types of Assignment of a Registered Trademark
Complete Assignment to another entity
The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc.
Assignment to another entity but with respect to only some of the goods/services
The transfer of ownership is restricted to specific products or services only. The owner of the Trademark will specifically transfers particular products or services to other. Remaining rights against other products and services were vest with the owner. This is called partial assignment.
Assignment with goodwill
Such assignment is where the rights and value of a trademark as associated with the product is also transferred to another entity.
Assignment without goodwill
Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer
Fee For Assignment Or Transfer Of Single Trademark
- If made within six months from the date of acquisition of proprietorship: Statutory fee is INR. 5,000
- If made after the expiration of six months but before 12 months from the date of acquisition of proprietorship: Statutory fee is INR. 7,500
- If made after 12 months from the date of acquisition of proprietorship: Statutory fee is INR. 10,000
Procedure For Trademark Assignment
The first step is to make an application for the assignment of trademark either by the assignee or the assignor or both of them. The application should mention all the details of the transfer and be made under form TM-R
Once the application is complete, file the same with the Registrar of the trademark. It has to be done within 6 months of acquisition of proprietorship or after 6 months with prescribed additional fees
When there is a trademark assignment with goodwill or of a registered trademark, the direction from the Registrar of trademark is mandatory before an expiry of 6 months (can be extended).
The Registrar will specify the advertisement of the trademark assignment. After which the applicant has to make the advertisement accordingly. Copy of advertisement along with a copy of the Registrar’s direction should also be submitted.
After the Registrar is satisfied with all the documentation, he shall officially transfer the trademark from the original to the new owner.The name of the Assignee i.e., the new owner is to be registered in the register as a new proprietor. After this, the assignee can use the trademark as per the terms of the agreement.