A Trademark Assignment is a legally binding document that grants permission to the registered proprietor of a trademark to transfer the ownership of the trademark and issue proper receipts for any consideration involved in the assignment. The assignor relinquishes their rights to a registered word, phrase, symbol, or design, transferring it to a new owner. When there is a transfer of the owner's power, title, and interest in the trademark, this process occurs.
In essence, Assignment and Transmission of Trademark is the procedure by which ownership of a trademark is transferred from one individual to another, entailing either full or partial rights, as specified in the terms and conditions set by the current trademark owner. Both with and without the goodwill of the associated business, registered and unregistered trademarks can be assigned and transmitted from one party to another. This assignment is facilitated through a trademark assignment agreement, which formalizes the transfer of ownership and rights.
In accordance with Section 37 of the Trade Marks Act, 1999, it is explicitly stated that the individual who is registered as the proprietor of a trademark in the register of trademarks holds the authority to assign the trademark to another person and also receive consideration (compensation or payment) for such assignment. Therefore, a trademark proprietor is legally allowed to transfer the ownership of the trademark to a different individual or entity.
Types Of Trademark Assignment
The various types of trademark assignments are as follows:
- Complete Assignment: In a complete assignment, the trademark proprietor transfers all rights associated with the trademark to another person. This includes the right to use the trademark for any purpose, the ability to earn royalties from its use, and the right to further transfer the trademark to others. After the complete assignment, the original proprietor no longer retains any rights over the trademark.
- Partial Assignment: In a partial assignment, the trademark proprietor transfers only specific rights related to certain services or goods of the trademark. The transfer of ownership is limited to those particular services or products.
- Assignment with Goodwill of Business: When a trademark is assigned with goodwill, the proprietor transfers not just the trademark itself but also all the associated values, advantages, and reputation linked to that trademark. The assignee can utilize the trademark for any category of goods or services, including those that were already being used by the assignor.
- Assignment without the Goodwill of Business: In an assignment without goodwill, the trademark proprietor transfers rights to the assignee concerning goods or services that are not currently in use. The assignor restricts the transfer of rights regarding goods or services already in use by them. Essentially, the assignee cannot use the trademark for the products or services that were already in use by the assignor.
To initiate the trademark assignment process, follow these steps:
- Submit Application: The first step is to prepare an application for the assignment of the trademark. This application can be made by the assignee (the new owner), the assignor (current proprietor). The application should contain all the necessary details of the transfer under form TM-P, as specified in Rule 75 of Trademark Rules 2017.
- File with Registrar: Once the application is complete, file it with the Registrar of Trademarks. It should be done within 3 months of obtaining proprietorship.
- Registrar's Direction (for assignments with goodwill or registered trademarks): where the trademark assignment involves goodwill or is of a registered trademark, obtaining a direction from the Registrar of Trademarks is mandatory. It must be obtained before the expiration of the 3-month period (can be extended if needed).
- Advertisement of Assignment: Upon receiving the Registrar's direction, the applicant must advertise the trademark assignment as specified by the Registrar. It should be done accordingly, and a copy of the advertisement, along with the Registrar's direction, must be submitted to the authorities.
- Transfer of Trademark: Once the Registrar is satisfied with all the documentation, the trademark will be officially transferred from the original owner to the new owner (assignee).
- Registration of New Proprietor: The name of the assignee, the new owner, will be registered in the trademark register as the new proprietor of the trademark. This formalizes the transfer of ownership.
- Usage of Trademark: the assignee (new owner) can use the trademark as per the terms and conditions specified in the agreement.
Benefits Of Trademark Assignment
- Trademark assignment allows the trademark proprietor to capitalize on the value of their brand.
- The assignee benefits from the trademark assignment by gaining the rights to an already established and recognized brand.
- For both the assignor and the assignee, trademark assignment can facilitate business expansion.
- Through a trademark assignment agreement, both the assignor and the assignee can establish their legal rights and obligations clearly.
Overall, trademark assignment provides a mutually beneficial arrangement for the trademark proprietor and the recipient, allowing them to leverage the value of the brand, expand their businesses, and establish a clear legal framework for the assignment.
Can an unregistered trademark be assigned?
Yes, the assignment of an unregistered trademark can be carried out with or without the goodwill of the business associated with the trademark. To proceed a request must be made on Form TM-16, which is the prescribed form for such assignments.
Can an Individual assign a Trademark?
Certainly, a registered trademark can be assigned by an individual.
Why it’s necessary to obtain a Trademark Assignment Agreement in India?
A Trademark Assignment Agreement serves as a legal mechanism to transfer ownership of a trademark or service mark when required. It plays a pivotal role when a product or company is being bought or sold by another individual or entity.
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