Intellectual PropertyTrademarks

How to Transfer Ownership of a Trademark

Every trademark owner who intends to transfer his or her trademark rights can do so through two ways: trademark licensing or trademark assignment, both of which are authorized by the Trademark Act of 1999.

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A trademark assignment is a procedure governed by Section 37 of the Act, through which the trademark’s ownership and rights are fully transferred to another party. Secondly, the partial assignment of a trademark is known as trademark licensing. This article discusses transferring ownership of a trademark in India.

Grounds for Transfer of ownership:

  1. Owner’s death
  2. When the business is for sale, the IP rights are transferred as well, along with the assets.
  3. Change in the owner’s name. A notification is submitted to the register when a firm merges or merges with another.
  4. A shift in the nature of the business, for example, from a sole proprietorship to a private limited company.

1. Trademark Assignment

‘A trademark assignment is a transfer of an owner’s right, title, and interest in a trademark or brand mark’, according to Section 37 of the Trademark Act, 1999 and ‘in the event of a registered trademark, the assignment must be documented in the trademark registry’.

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Kinds of Assignment:

i) Complete assignment:

Complete rights to the registered trademark are transferred to the second party in this sort of assignment, in exchange for royalties. Once done, the owner of the trademark loses all rights to it.

ii)  Partial assignment

In this instance, the trademark owner might keep a few rights and limit the transfer of the trademark to only certain items and services.

iii)  Assignment with goodwill:

The trademark owner conveys the trademark rights as well as the value of the trademark connected with it in this type of trademark assignment. The second party can then use the proposed mark in relation to any products and services.

iv)  Assignment without goodwill:

Also known as Gross Assignment. In this scenario, the trademark owner restricts the buyer’s ability to use the brand for a product that is already being used by the original owner while transferring the property.

Documents required for trademark assignment:

  • Trademark assignment agreement
  • Identified documents of both parties
  • Power of attorney
  • NOC from owner
  • Trademark certificate
  • Proper consideration (Payment certificate)

Process of trademark assignment:

  1. The Assignor, Assignee, or both must submit an application for a trademark assignment. They can also submit a request together.
  2. Fill out the TM-P form with all of the essential information about the transfer.
  3. Submit all relevant documentation for Trademark assignment to the Registrar of the Trademark within 6 months of the date of acquisition of proprietorship after completing the TM-P form.
  4. The application will be evaluated once the assignment application has been properly submitted together with all required papers.
  5. As soon as your application is approved, the applicant must advertise the assignment in the manner authorized by the Registrar. Also, provide a copy of the Registrar’s directive and the assignment’s advertisement to the Registrar’s office.
  6. The Registrar will verify the application, and if the Registrar is satisfied, the application will be approved. The assignee, on the other hand, shall be registered as the trademark owner by the Registrar and the details will be recorded in the registry.

Trademark Licensing:

It permits the transfer of a trademark while imposing some limitations that prohibit the licensee (new owner) from having complete ownership of the licensor’s rights (original owner). Although it appears to be restrictive, it benefits both the licensor and the licensee since the former may extend his market and increase the number of consumers, while the latter can benefit from the trademark royalties.

The steps for registering a trademark license agreement are identical to those for establishing an assignment agreement.. Both the licensor and the licensee are allowed to create the application, which must be in TM-28 form format. Once done with the application, documentation, and other requirements, the registrar allows you to transfer trademark rights as per the terms mentioned in the license agreement.

Contact Vakilsearch to get the most satisfactory and end to end solution on trademark assignment.

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