A trademark is an IP, the same as any other physical property as land. And as the owner of the land has the right to transfer or sell property; likewise, the trademark owner also has the right to transfer the trademark.
Every proprietor of the trademark who wants to sell or transfer the trademark can do so by trademark licensing or trademark assignment regulated under the trademark act, 1999 once he/she possess the rights with company trademark registration in India. It is essential to carry out company trademark registration in India before starting the business.
Read to Know Meaning Of Overwhelmed.
Defining the trademark assignment.
Trademark assignment is a process by which proprietorship and rights of the trademark can be transferred to anyone. It takes place betwixt parties only after implementing an agreement called a trademark assignment agreement. Also, partial agreement of the trademark is referred to as trademark licensing.
According to section 37 of the trademark act, 1999, the trademark assignment is a transfer of a proprietor’s title, right, and interest in a trademark or brand mark. In a scenario where the trademark is registered, the assignment must be recorded in the trademark register.
Types of trademark assignment.
Complete assignment – here, the complete rights will be transferred to the second party concerning the registered trademark. The trademark owner, in this case, transfers all the rights to the other person to earn the loyalties in return. The trademark owner will not have any trademark rights once the he/she transfers the trademark via an agreement to a second party.
For example, Rahul, the owner of GHJ, sells his whole association via an agreement to Kanak; here, post-transfer, Rahul will not have any rights to it.
Partial agreement – here, the proprietorship of the trademark is transferred only concerning certain products/services as pre-decided by both parties via trademark assignment agreement. In such a scenario trademark owner can have few rights and limits the transfer of trademark to specific products/services only.
For example, Rahul, owner of milk and buttermilk as a whole, transfers ownership rights concerning milk only and retains rights over buttermilk; it would be known as partial assignment.
Assignment with goodwill – here, the trademark owner transfers the rights of the trademark concerning the value of the trademark linked with it. When the assignment with goodwill takes place, the value and rights of a trademark are provided to the second party to use the proposed mark about services/products.
For example, if the owner of a brand, ‘Gokul,’ which deals with dairy products, sells his/her brand to ‘A,’ then ‘A’ can use such a brand about its dairy products and other products it manufactures. And can try usda mortgage for loans.
The assignment without goodwill – it is also known as gross assignment. The owner of the brand, while transferring the trademark, limits the rights of the buyer to use such a brand for a product that the owner is already using. Thus, any goodwill linked to such a brand about a product already being sold under such brand will not be transferred to the buyer.
For example, suppose the trademark owner of ‘Real me’ uses it for marketing and producing of mobile phones and chooses to assign it to another party without any goodwill. In that case, another party can use the trademark for products apart from the mobile phones.
Benefits of trademark assignment.
Security for both parties – to carry on a authenticate and valid trademark assignment, the trademark assignment agreement is implemented betwixt both parties the includes assignor and assignee. It will be valid proof and admissible in the court if any dispute arises in the future.
Business expansion – trademark assignment helps business expansion as both parties get the right to collaborate the brand with their respective businesses.
Pre-established brand – you will not have to invest money, time, and labor in creating and marketing your brand if you got the right on existing established famous brand via trademark assignment. Assignee does not even have to create a new brand as well.
Certain pre-requirements to keep in mind for it in India.
– Trademark owner should have the intention and volition for trademark assignment.
– Trademark assignment has to be in writing.
– Two parties have to be there, assignor and assignee.
– Valid identified documents of both parties.
– Trademark assignment agreement’s valid execution.
– Proper identification of marks.
– Proper consideration.
– Inclusion of transfer of trademark in goodwill.
Required documents.
– Owner’s NOC.
– Trademark certificate.
– Power of attorney.
– Trademark assignment agreement.
– Identified documents of both parties.
Step-by-step process.
– First, both parties or any one of them have to make an application for a trademark assignment.
– Then, it is crucial to submit the TM-P form by presenting all the needed details of the transfer.
– After that, you will have to submit all the required documents needed for trademark assignment to the registrar of a trademark within six months from the date of application of ownership.
– After the successful submission, along with required documents, the application will be processed.
– Applicant will have to make an advertisement for assignment in a manner as directed by the registrar after the application is specified. Furthermore, file a copy of the registrar’s direction and advertisement of the assignment in the registrar’s office.
– Lastly, the registrar would verify and inspect the application, and if he/she is satisfied, he/she will approve the application. Nonetheless, the registrar would register the assignee as an owner of the trademark. The registrar would enter the details of the assignment in the register.
In conclusion.
The process of trademark assignment involves good planning from both parties to get it done. Also, it offers a lot of opportunities to both parties after the successful approval from the registrar.
