In the modern world, the economic worth of a trademark is immense. The owner of the trademark can transfer the rights over their trademark through the process of Trademark Allocation.
A trademark is an owner’s right to exclusively use a mark. Trademarking confers a bundle of rights which includes the right to transfer of trademark. Trademark assignment refers to the task of legally transferring the title of a trademark from the primary owner (called the assignor) to the assignee, the person receiving such a right.
Forms of Assignment or Transfer of Trademark
Every registered trademark is assignable and transferable. It can take one of the following forms –
- The transfer of a trademark can be done with or without transferring the goodwill of the business. For example, when Tata Motors took over the trademark of Jaguar’s business in India, Tata Motors also took over the goodwill of Jaguar entirely in the automobile business.
- Trademark allocation can also be done for some or all of the goods or services for which the trademark has been assigned. For example, a cement company having multiple other businesses like construction, quarrying, and interior designing, may assign the trademark of its construction business only.
Significance and Formulation of Assignment Agreement
According to the Trademarks Act, 1999 a trademark allocation can only be done by an agreement in writing between the parties concerned. Therefore, both the assignor and the assignee of the trademark must execute a legal document for the transfer of the trademark. To help you navigate the process of drafting an assignment agreement, here are some essentials –
Details of the Mark
Since the legal title over the trademark is sought to be transferred, details about the trademark should be specified in the assignment agreement. Aspects of a trademark such as the brand name, application number, class number, and current status (active or not) should be mentioned in the assignment agreement without fail.
Delineation of Legal Titles
The assignor of a trademark must have all the rights, titles, and interests in the trademark. The operative part of the assignment agreement must explicitly mention that the person transferring the trademark is its lawful owner. It must also establish that the assignor (either themselves or through their successor, power of attorney holder) has the complete right, absolute power, and lawful authority to sell or assign the mark.
Consideration
The assignment agreement should mention the amount paid by the assignee to the assignor in exchange for the trademark allocation. The receipt of consideration establishes that all rights, titles and interests in the trademark together have been assigned.
The trademark search tool at Vakilsearch lets you find the previously registered trademarks to avoid copyright infringement.
Goodwill
You may also specify whether the transfer of trademark includes the transfer of the goodwill of the business, product permission and other intellectual property rights.
Dispute Resolution and Governing Law
Parties may mutually decide to include appropriate jurisdiction for dispute resolution. They may also include a clause preferring arbitration specifying the seat of such arbitration and the choice of law governing the dispute.
Details About Ancillary Intellectual Property Rights
By way of the trademark assignment agreement, an assignee must specify that a trademark’s trade name, internet domain names, and applications for the registration thereof together with all of the goodwill associated therewith are transferred.
It is also in the assignee’s interest to ensure all other intellectual and industrial property rights of every kind which are transferred are mentioned in full detail.
The assignor and assignee may mutually decide on the formalities relating to assignment registration, renewals, extensions, continuations, divisions, reissues, etc.
Other Relevant Details the Assignment Deed Must Mention:
- The assignee’s right to sue against any other party for trademark infringement. The assignor’s delineation from any right or interest in the said trademark after the agreement is concluded.
- A statement that proclaims that the assignee would be entitled to use and enjoy the trademark for their business without any objection or interruption by either the title owner or any person laying claim under them.
Procedure of Assignment or Transfer of Trademark
Step 1: Application for trademark assignment
Application for assignment can be made by the assignor or by the assignee or by both.
Step 2: Filing Form TM-P
To submit your application to the Registrar of trademark assignment, you will have to complete the formalities associated with form TM-P and pay the requisite fee.
Step 3: Documents submission
You must then submit all the required documents within 6 months from the date of acquisition. To know more about the documentation process, get in touch with our experts.
Step 4: Application processing and advertisement of assignment
Once the application is processed, the applicant must advertise the assignment in such a manner as directed by the registrar. A copy of the advertisement should also be submitted to the Registrar’s office.
Step 5: Approval
Once the application is verified, the registrar will register the assignee as the proprietor of the trademark.
How to do a Transfer of Trademark in India?
The process of trademark assignment is time-consuming and requires extensive documentation. However, it can be highly lucrative and extremely profitable. Therefore, we recommend that you lean on Vakilsearch, India’s most trusted trademark expert to execute trademark assignments.
Our team of experts is well-versed in the formalities and nuances associated with the trademark registry. Moreover, our experts will ensure that the trademark assignment agreement is drafted and executed to perfection. They will leave no stone unturned to ensure that your upside is maximized.
Feel free to reach out to our representatives for expert guidance and assistance with all trademark-related queries.
