Trademarks

Assignment of Trademark with Goodwill

Assigning a trademark entails giving the other party the owner's title, rights, interests, and benefits. The parties involved in a transfer are referred to as the "Assignor" and the "Assignee."

Trademark Assignment has been defined in Section 37 of the Trademark Act 1999. According to the definition, a “Trademark Assignment” is transferring ownership of a trademark and a brand mark. Both temporary and permanent transfers are possible through Trademark Assignment. Trademark Assignment is a procedure in which the actual owner of the trademark transfers ownership of the trademark, with goodwill or without the goodwill, to the new proprietor who has been duly registered. Through Vakilsearch, get your trademark assigned online.

Assignment of Trademark with Goodwill 

When an Assignor transfers ownership of a trademark connected with goods or services currently in use by the assignor to the assignee, all associated value, rights, and entitlements are likewise transferred. The Assignee is free to use the trademark given to him for any products or services, including those that were already being provided by the assignor, after assuming ownership of the brand’s goodwill. Tradeamrk with Business Goodwill is the name given to such a transaction.

As an illustration, A, the owner of the “TH” trademark for the production and sale of watches, may assign the trademark and grant the assignee the right to use the mark in connection with the same product.

Assignment of Trademark without Goodwill

Assignment of the trademark without goodwill states that the Assignor will limit the buyer’s rights while transferring the trademark. Here, the assignor forbids the buyer from using a product brand that the assignor already uses. In other words, the assignee does not receive the goodwill associated with the brand. It is also called a Gross Trademark.

For instance, if the owner of the trademark TH decides to assign it without goodwill despite using it for the manufacture and sale of watches, it indicates that the assignee may use the brand TH for any product other than watches.

What Advantages do Trademark Assignments offer?

For the company’s budget, designing and promoting the trademark can be highly expensive. The company decides to legalise its intellectual property and assign its trademark as a result. The following are some of the advantages of trademark assignment with goodwill. 

  • Brand Monetisation

Profit from the value of your trademark and take an interest in the results of the time and effort spent developing your brand.

  • Easy Brand Development

The assignee benefits as well because the brand building is not something they have to do.

  • Maintenance of Intellectual property rights 

It refers to the process of keeping trademark registrations current. Trademark assignment aids in this process.

  • The owner receives the Trademark’s Value

Creating a brand, which takes a lot of money, effort, and time. As a result, the trademark assignment aids the trademark’s creator in determining the trademark’s financial worth.

  • Serves as a Reliable Proof

If there is ever a disagreement over the assignment of a trademark, it can be used as legitimate proof. Through such agreements, the registered trademark owner’s legal rights are effectively secured.

What Documentation is Needed for the Assignment of a Trademark?

The following documentation is necessary for trademark assignment:

  •  A certificate proving trademark registration
  • Details of the assignor and assignee, including evidence of identity and residence
  • A NOC (Non-Objection Certificate ) from the registered trademark’s first holder
  • A description of goodwill or without goodwill-based trademark assignment
  • A copy of the ad and the registrar’s instructions
  • Witnesses and Signatories
  • Notarisation
  • Proof of the Time and Place of Execution
  • Authority of Attorney

List of Prerequisites for the Trademark Assignment Registration 

  • The assignment of a trademark must be made in writing
  • It needs to include the next two identifying parties
  • an Assignor (trademark owner or actual owner)
  • an Assignee (the purchaser of the trademark or new owner)
  • It must be done with the assignor’s knowledge and permission
  • It has to be made for just compensation

Steps Involved in Trademark Assignment Agreements

  1. The Assignee, Assignor, or both must submit an application for the Trademark Assignment as the first stage. In accordance with Trademark Rules  2017, the application must be made using Form TH and include all relevant information regarding the transfer.
  2. After the application is completed, its needs to be submitted to the trademark registrar within 3 months of the acquisition of the ownership or proprietorship.
  3. The approval from the Registrar of a trademark is required before the expiration of three months which can be extended when there is a Trademark Assignment with goodwill or without the goodwill of a registered trademark.
  4. The Registrar will mention and provide details on how the Trademark Assignment will be advertised. The applicant then has to make the proper advertisement as per the advertisement code mentioned by the registrar. Additionally, a copy of the advertisement made by the new owner, along with a copy of the registrar’s instructions, must be submitted.
  5. The Registrar will formally transfer ownership of the trademark from the actual owner to the new owner, who has been registered after the registrar is satisfied with all the supporting evidence provided.
  6. The Assignee, or new owner, must have their name entered in the register as a new owner. The Assignee may then use the trademark in accordance with the terms of the agreement.

Get your trademark assigned through Vakilsearch online, it provides a seamless interactive process.

Conclusion

The Trademark Assignment enables the owner to profit financially, intellectually, and time-wise. The registration of a trademark assignment is equally significant since it serves as notice to the general public because, upon registration, the assignee’s information is updated in the trademark register. Additionally, the creation of assignment agreements is crucial since they contain the rights, obligations, interests, and economic terms between the Assignor and the assignee. Connect with  Vakilsearch, and let our experts help you with the assignment of your trademark.

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