Intellectual PropertyTrademarks

Why Does a Trademark Assignment Need to Be Notarized?

A trademark assignment is a transaction where some or all of the property rights are transferred to another person or entity. It usually involves big money and needs to be notarized to be valid.

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Trademark owners have complete rights over their trademark and they can sell, license, and transfer it. There are two ways by which the trademark is transferred:

  1.   Assignment
  2.   Licensing

After the trademark assignment, the receiver becomes the proprietor of the Trademark. Trademark Act, 1999 deals with trademark assignment and licensing and in this blog, we explain the defined procedure for the transfer or selling of a trademark.

What Is a Trademark Assignment?

It is a written document that helps in transferring the trademark (recognised phrase, word, design, or symbol) from the original owner to another. The original owner of the trademark is known as the assignor, and the one who becomes the new owner is called an assignee.

Transfer can be made with or without the goodwill of the business. Transferring the rights with goodwill implies you give up the trademark and what it stands for. On the other hand, transferring without goodwill (as in franchising), the trademark owner still retains the goodwill while allowing the other person to use it.

If it is a registered mark, then the transfer or assignment has to be recorded in the Register of Trademark.

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Types of Trademark Assignment

Before going ahead and understanding the process, let us know about the type of trademark assignment:

  1. With goodwill– It promotes the exchange of proprietary rights and brand value of a trademark. The person who takes the trademark can use the brand’s market reputation to increase sales.
  2. Without Goodwill– The assignee doesn’t get to use the brand value.

Benefits of Trademark Assignment

An assignment deed is essential to transfer a trademark and here are its benefits: 

Valid Proof

An assignment deed acts as proof of the transaction and is essential to prove your rights in case of a dispute. 

Enjoy Branding

Building a brand from scratch is difficult and takes a lot of skill and time. So, for many people, it might be quite a stretch. Trademark assignment, on the other hand, allows you to use a mark around which a brand and a level of trust are already built.

Security

Under the trademark assignment, the agreement will be executed by both parties. This assignment acts as valid proof and is admissible in court, in case a dispute arises between the two parties. Additionally, the assigned trademark is also published in the trademark journal. In case of dispute, the Registrar scrutinizes all the clauses.

Market Value

Trademark is of great value. Moreover, it showcases the uniqueness of the brand and also establishes an instant connection with it. Additionally, if someone buys a pre-recognized trademark, then they get the benefit of the name of that brand.

Notarization of the Trademark Assignment

The assignment must be notarized on the stamp paper of the right value. If you are planning to operate your company with a foreign company, then you would understand that notarization is important. Also, note that it must be stamped in India.

Notarization is required for many key documents in transactions like affidavits, insurance loss declarations, home transfers, authentication of international documents, etc. It is another level of security to the transaction. Since trademark assignment involves transferring rights over an asset (that usually costs a lot of money), notarizing is important. 

Moreover, at the time of transfer, the assignor submits an affidavit which is notarized mentioning that the Trademark is truly theirs. This is required to make it easy to prove that there is no pending litigation. 

Documents Required for Trademark Assignment

  1.  Trademark registration certificate
  2.  Name and details of the assignor and assignee
  3.  No objection  certificate from the original owner
  4.  Copy of the logo
  5.  Form-48
  6.  ID proof of proprietor
  7.  Address of the properties

Elements of Trademark Assignment Deed

  1. Date of transfer of Trademark
  2. Transformation of Trademark
  3. Name and details of assignor or assignee
  4. Remuneration paid for the transfer of Trademark
  5. Warranties regarding ownership of the Trademark
  6. Signature of both assignor and assignee
  7. Notary public to notarize the Trademark

Process of Trademark Assignment

  1. The assignee must apply in the designated manner for trademark assignment
  2. Additionally, assignee or assignor or both must issue Form TM-P
  3. This form will make the assignee a subsequent proprietor
  4. Apply with the register of trademark six months before the date of proprietorship
  5. The form can be filled later, but the fees must be paid on time
  6. A copy of the application along with the advertisement must be sent to the Registrar office for publication
  7. The Registrar will finally make the assignee a proprietor of the trademark.
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