Legal AdviceTrademarks

How Do You Assign a Trademark?

In this blog, you will learn everything about assigning a trademark. You will also learn about the procedure included in assigning a trademark in India.

A trademark is the exclusive right of the owner to practise a mark. The right to transfer a trademark is among the right granted by trademarking. Trademark transfer or allocation refers to the process of legally transferring the trademark title from the main owner (known as the assignor) to the receiver (known as the assignee).

The assignor, like any other property/asset owner, has the right to sell, license, or transfer the trademark. The Trademark Assignment Agreement or Trademark Licensing could be used to transfer trademarks.

The current article defines trademark assignment, as well as its perks, types of trademark assignment, preconditions, and trademark assignment procedure.

What’s Trademark Assignment?

A trademark assignment is a written document that facilitates the transfer of a well-known word, phrase, symbol, or design from one owner to another. The assignor is the trademark’s original owner, and the assignee is the future owner.

A trademark is delegated when the owner’s right, title, and interest in the trademark is transferred. In other words, it is the transfer of ownership with or without the goodwill of the business. Such an assignment must be recorded in the Trademark Register if the trademark is registered. To transfer a trademark, a trademark assignment agreement could be used.

Section 37 of the Trademark Act of 1999 defines trademark assignment. As per the actual definition, trademark assignment refers to the transfer of the owner’s right, interest, and title in a trademark and a brand mark.

In layman’s terms, trademark assignment refers to the procedure of transferring the right and ownership of a trademark to another person.

Some of the benefits of trademark assignment (for both the owner and the buyer) are as follows:

  • The trademark assignment allows the trademark owner to cash in on the value of his brand.
  • A trademark assignment allows the assignee to obtain the rights to an already established brand.
  • In the event of a dispute, the trademark assignment agreement allows the assignor or assignee to establish legal rights.
  • The trademark assignment allows both the assignor and the assignee to expand their respective businesses.

The Trademark Act of 1999 restricts certain assignments, such as-

  • There is a restriction on trademark assignment, which results in the creation of exclusive rights for more than one person in relation to the same or similar goods or services.
  • The Act also restricts trademark assignment, which results in different people using the same trademark in different parts of the country at the same time.

Assignment of Unregistered Trademarks and Registered Trademarks

Section 39 of the Trademark Act of 1999 states that any unregistered trademark may be further allotted or transmitted with or without goodwill.

Section 38 of the Trademark Act of 1999 addresses the allotment and transmission of a trademark with or without the business’s goodwill. It specifies that a trademark can be assigned in whole or in part, with or without goodwill.

GET TRADEMARK ASSINGMENT

What Are the Advantages of Assignment of a Trademark?

Designing and marketing the trademark can be extremely costly to the company’s finances. As a result, the company decides to assign the trademark and legalise its intellectual property. The following are some of the advantages of trademark assignment:

  • The assignee benefits as well because he or she does not have to work on brand building.
  • Trademark assignment aids in the maintenance of intellectual property by allowing registrations to be kept up to date.
  • Maximise the value of your trademark and reap the benefits of your time and investment in developing the brand.
  • Brand creation necessitates significant investment, time, and effort. Thus, the Trademark assignment assists the Trademark’s author in determining the cash value of the Trademark.
  • Trademark assignment can serve as valid proof in the event of a dispute over trademark assignment. Such agreements effectively protect the registered trademark owner’s legal rights.
  • The assignment of a trademark aids in the expansion of a business into a similar market of the industry.

Different Kinds of Trademark Assignment

There are four different kinds of trademark assignments:

1. Partial assignment

The assignor transfers only limited ownership of specific products/services under a partial assignment.

2. An assignment with Goodwill

The assignor of the trademark transfers the rights to the trademark as well as the value of the trademark to the assignee under ‘assignment with Goodwill.’

3. Complete assignment

The assignor transfers the assignee’s entire rights to the registered trademark under a complete assignment.

4. Gross assignment or Assignment without Goodwill

In this type of trademark assignment, the assignor limits the buyer’s rights while transferring the trademark. The assignor here prohibits the buyer from using a brand of the product that the assignor already uses. In a nutshell, the brand’s goodwill is not transferred to the assignee.

The Entire Procedure for Trademark Assignment

The following are the prerequisites for trademark assignment:

  • The assignment of a trademark must be in writing.
  • The assignment must include two identifying parties: an assignor (the owner of the trademark) and an assignee (buyer of the trademark).
  • The assignor must have the intent and consent to assign the trademark.
  • The trademark must be assigned for proper consideration.
  • Trademark assignment agreements, trademark certificates, NOC from the assignor, and identified documents from the assignor and assignee are all required documents for trademark assignment.

The procedure for requesting a trademark assignment is outlined below-

  • Using Form TM-24 or Form TM-23 to file a trademark assignment application (in case of joint request). This type of application can be filed by either the assignor or the assignee, or both.
  • Form TM-P submission
  • Submission of all necessary trademark assignment documents to the trademark registrar. The filing must be completed within six months of the date the proprietorship was acquired.
  • The trademark registrar will specify how the trademark assignment will be publicised.
  • The applicant must publish an advertisement for the trademark assignment in accordance with the registrar’s requirements.
  • The registrar will approve the application if all requirements are met. As a result, the registrar will register the assignee’s name as the proprietor of the trademark.

Summing it Up – How to Transfer a Trademark the Easy Way?

The trademark assignment process takes time and necessitates extensive documentation. It does, however, have the potential to be extremely profitable. As a result, we strongly advise you to entrust trademark assignments to Vakilsearch, India’s most reliable trademark experts.

Our expert team is well-experienced in the complexities of trademark registration. Furthermore, our professionals will make certain that the trademark assignment contract is properly enlisted and implemented. They will go to great lengths to maximise your upside.

Please contact our representatives if you necessitate expert advice or assistance with any trademark-related issues.

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