Similar to real estate, a trademark is intellectual property. The owner of a trademark has the same rights to sell or transfer his intellectual property as a landowner does. The process of transferring trademark ownership from one party to another is known as trademark assignment.
A trademark assignment is a transfer of an owner’s right, title, and interest in a trademark or brand mark, as stated in Section 37 of the Trademark Act of 1999. The assignment must be entered into the trademark register if a trademark is registered. Trademark assignment is the process by which a trademark’s right and ownership are transferred to another person.
Types of trademark assignment:
The second party receives full ownership of a registered trademark as a result of this assignment. In this case, the owner gives the other party all rights to mark, including rights to transfer them in the future and earn royalties, among other things.
As the parties have decided or stated in the trademark assignment agreement, in the event of a partial assignment, the transfer of ownership is restricted to particular services or products.
The complete or partial assignment can be done with or without good will.
Assignment with goodwill
The assignment is made in such a way that the rights and value of the trademark are transferred beyond the class of goods for which it was previously benignly used. It is permissible for the party receiving ownership of the trademark to use it for any category of goods. under the Act’s Section 39.
Assignment without goodwill
Assignment without goodwill is also known as Gross assignment.. In this instance, the buyer’s rights are restricted by the trademark owner. The buyer cannot use this trademark on the product the original owner is using. As a result, the buyer does not receive the trademark’s goodwill for the product that is already being sold under that brand.
Procedure for registering a trademark assignment with the registry
Trademark Assignment Without Registration
“Any unregistered trademark can be further allotted or transmitted with or without the goodwill,” as stated in section 39 of the 1999 Trademark Act.
Transfer of the trademark that is Registered
“It states that a trademark can be assigned in part with or without goodwill,” as mentioned in section 38 of the 1999 Trademark Act.
Process for assigning a trademark :
Through a trademark assignment agreement, the assignee receives the rights to the trademark that belong to the assignor. By submitting an application for a trademark assignment on Form TM-P to the trademark register, either the assignor or the assignee, or both, may jointly request that the assignment be registered. Within six months of the assignment date, Form TM-P must be submitted to the trademark registrar. After six months of assignment, the application can be filed, but the fee may change accordingly. Within the timeframe established by the trademark registrar, the assignment must be advertised. The advertisement’s copy and the registrar’s instructions should be sent to the trademark registrar’s office. The registrar of trademarks will register the assignee as the proprietor of the trademark and record the terms of the assignment in the register as soon as they receive the trademark assignment application (form TM-P) and any necessary documents.
Documents Required for the Assignment of a Trademark
Along with the form TM-P, Trademark assignment agreement, Certificate of trademark,No Objection Certificate from the assignor which is duly stamped and notarized, No Objection Certificate from the assignee which is duly stamped and notarized, Documents used to identify the assignor and the assignee must be submitted to the trademark registrar.
Restrictions on Trademark Assignment
Parallel Use Restriction : The assignor is prohibited from assigning a trademark if the assignment will likely deceive or cause confusion and will result in the creation of exclusive rights in relation to the same or similar products or services. As a result, multiple individuals cannot hold exclusive rights to the same or similar goods or services. It prevents multiple individuals from using a trademark for the same or similar goods or services.
Multiple Territorial Use Restriction: The assignor is prohibited from assigning a trademark if the assignment results in the creation of exclusive rights for various individuals in various parts of India relating to the same or similar goods or services. When the assignment results in the creation of an exclusive right relating to the same or similar products or services sold or delivered outside of India, the assignor cannot assign a trademark. As a result, it is against the law to assign rights to the same or similar goods or services in different parts of India.
Benefits of Trademark Assignment
The trademark owner is able to cash in on the value of his or her brand when a trademark is assigned. As a result of the assignment of a trademark, the assignee acquires the rights to a well-known brand. The assignment of a trademark helps both the assignor and the assignee grow their respective businesses. In the event of a dispute, the trademark assignment agreement enables the assignor and assignee to establish their legal rights.