Trademark Assignment : A Legal Roadmap

Updated on December 19, 2023 06:01:41 AM

A Trademark is an essential component for a business that aids in making a standout reputation of a brand in the market. A Trademark is not just a mark or symbol but a valuable asset for the brand holders that builds trust among consumers. Therefore, it is important for a business to protect its trademark. As with other Intellectual property, the trademark is also a transmission asset.

Trademark assignment is the process of transferring ownership of a trademark from one party to another. To prevent trademark misuse or abuse, the trademark assignment process is essential. A trademark must also be registered and protected properly. Get the complete information about the Trademark Assignment, its types, process, fees, documents and benefits in this article.

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What is Trademark Assignment?

Trademark Assignment is a Legal procedure in which the Trademark owner transfers its ownership rights to another party. Here, two parties are involved. First is the “Assignor” who is the current owner of the TM and going to transfer its rights to another. Second is the “Assignee” who receives the trademark rights after the assignment.

The Trademark assignment is mentioned under “Section 37 to 45 of Trademark Act, 1999 Trademark”. It is a strategic transaction that contains a formal agreement outlining the transfer of rights and obligations, as well as the exchange of considerations between the parties.

Types of Trademark Assignment

There are four types of Trademark assignment, these are as follows:

Complete Assignment

A complete assignment transfers a complete set of rights connected with a trademark from the Assignor to the Assignee. The exclusive right to use the trademark in connection with the specified products or services is included.

Partial Assignment

A partial assignment involves the transfer of specified trademark rights, which are often limited to specific groups of products or services. The remaining rights are owned by the Assignor.

Assignment with Goodwill

Customers' goodwill is the reputation or positive association they have with a particular trademark. A goodwill assignment transfers not just the tangible assets of the trademark but also the intangible assets linked with the company's reputation and customer connections.

The assignment without Goodwill

The trademark is transferred without any associated business or goodwill in an assignment without goodwill. This is typical when a trademark is sold independently from the business in which it is used, or when the original owner no longer requires the trademark.

Process of Trademark Assignment

The complete procedure for Trademark Assignment is as follows:

Step 1: Mutual Consultant and Negotiation

At the initial stage of Trademark Assignment, both parties must have a mutual consultant. Therefore, the Assignor and Assignee negotiate the terms and conditions of the Trademark Assignment. This negotiation includes the type of agreement (e.g. complete assignment or partial assignment), limitations and specific rights that are being transferred.

However, both parties must seek legal guidance before going through this procedure. A professional lawyer/attorney guides the whole procedure and provides a hassle-free strategy for transferring the IP asset.

Step -2: Filing TM-P form

After the consultant, anyone whether the “Assignor” or “Assignee” files the “TM-P” form. This form will be submitted to the TM Registrar. The applicant has to pay ₹9,000 which is the government fee for TM- P and some related documents. The documents are mentioned below:

Required Documents for Trademark Assignment

  1. Trademark Certificate
  2. NOC from Assignor
  3. Trademark Assignment Deed
  4. Identity proof of both parties (Assignor & Assignee)

Step -3: Reviewing the Application

Once the TM-P form has been to the TM Registrar's office, this form goes to the reviewing. Here, the registrar checks the application and deeds whether it is appropriate or not.

Step -4: Accept or Reject

After reviewing the application by the Registrar, it could be accepted or rejected. The Applicant will be informed by the TM office if the application is accepted by the registrar in 3 months from the application filing.

In some cases, the application could be rejected by the registrar. In this situation, a different legal procedure is conducted where the applicant must submit some other details and documents.

Benefits of Trademark Assignment

There are several benefits of Trademark Assignment, some of them given below:

  1. Assigning a trademark may be a smart move for business development. It enables the Assignor to provide the Assignee rights to use the trademark in new markets, regions, or for additional goods and services, allowing for company expansion.

  2. Trademark assignments can be used by businesses to build strategic alliances and collaborations. A strategic partner's trademark might lead to mutually advantageous partnerships, joint ventures, or co-branding opportunities.

  3. Trademark assignments can be used to reduce risk. If the Assignor is facing financial difficulties or wishes to reduce exposure in a certain market, transferring the trademark may transfer some of the related risks to the Assignee.

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Conclusion

Trademark assignment is the procedure by which a trademark owner assigns ownership of a trademark to another party. The assignment must be in writing and signed by both parties. Once the assignment is recorded, the new owner will have all of the rights and duties associated with the trademark.

Before seeking to assign a trademark, it is critical to grasp the fundamentals of trademark law. Businesses may guarantee that their trademark assignments are legitimate and enforceable by taking the necessary measures.

Frequently Asked Questions (FAQs)

What is Trademark Assignment?

Trademark assignment is a legal process in which the owner of a trademark assigns ownership rights to another party.

What is Trademark Transmission?

Trademark Transmission is a lawful procedure in which the Trademark succeeds to the other after the death of the current owner.

What are the documents required for Trademark Assignment?

A Trademark Certificate, NOC from the Assignor, Trademark Assignment Deed and Identity proof of both parties (Assignor and assignee) are some essential documents that are required for Trademark Assignment.

What is Trademark Renewal?

Trademark Renewal is a legal procedure to extend the validity of a registered trademark after a particular duration. It helps to maintain exclusive rights and protects the existing brand.

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