TRADEMARK ASSIGNMENT/TRADEMARK TRANSFER

Under Trademarks Act, the owner of the trademark has the right to sell, license and transfer the property in a similar way as the physical property is transferred. In case trademark ownership is transferred by way of assignment, the concerned person shall transfer the ownership as well as rights attached with the registered trademark either with or without goodwill. Moreover, he has to bring himself on record with the trademark register office by submitting an application with a suitable fee as prescribed by the department.

DOCUMENTS REQUIRED:

While making the trademark assignment by the proprietor, it must be in writing and must identify the parties i.e. owner of registered mark and the other entity.

• Trademark assignment agreement duly executed and notarized
• Identified document of assignor and assignee
• Power of attorney authorization agent/attorney for assignment
• Affidavit with notary

MANNER OF TRADEMARK ASSIGNMENT:

Complete Assignment

The concept of complete assignment deals with transfers all the rights related to the trade marks from owner of trademark to the other party. In other words, once the mark is retained by another party, owner lose complete right over it.

Assignment with Limitations

Under this case, the owner transfers the right over the mark but limits the transfer of goods to certain goods and services.

Assignment with Goodwill

The registered owner of trademark transfers the trademark as well as the value/goodwill of the trademark linked with the product, if it is a case of transfer with goodwill. Example if the trademark owner has TM registration for word Duraware with respect to electrical products, then the person to whom the mark has been transferred can use the word Duraware along with other products it manufactures, as well.

Assignment without goodwill

Under this case, the owner of the trademark restricts the right of the other entity/third party to whom the transfer to be made and not allowing him to use the trademark in respect of goods already being sold by him, and thus the value/goodwill associated with that brand/trademark is not transferred to the other entity/buyer.

PROCEDURE OF TRADEMARK ASSIGNMENT

Given below is the process for the Trademark Assignment:

Trademark Assignment Application

An application for Trademark Assignment shall be made by the registered owner or the other entity to whom ownership to be transferred. Moreover, both can make a joint request to register such other entity as a subsequent proprietor.

Filing of TM-P

An application in form TM-P is to be filed with the registrar of the trademark within six months from the date of acquisition of the proprietorship. In case the application is filed later, the requisite fee may vary accordingly. Form TM-P shall be filed along with duly certified copy of original deed or instrument and a statement of case in support of assignment request.

Processing

For the assignment without goodwill or assignment of a certified trademark, the orders required from the trademark registrar before the expiry of period of six months from the date on which assignment is made or within such extended period which is allowed by the registrar of trademark.

Advertisement of Assignment

After the directions are received from the registrar the assignment is to be advertised in the prescribed manner and form along with the prescribed fees. After the directions and advertisement a copy of the directions and copy of advertisement shall be submitted with the registrar just to ensure that all the directions of the registrar of trademark are duly followed.

Approval

On the receipt of the trademark assignment application and required documents, the registrar after getting satisfied shall register the other entity as the proprietor of the trademark and the details of the assignment to be entered in the register.

LICENSING OF TRADEMARK

Licensing of Trademark generally deals with the usage of registered mark by the other entity without ownership being transferred. In other words, licensing is used to allow the other to use the mark without assigning the ownership. The Licensee is termed as “Registered User” under Trade Mark Act, 1999.

Further, an application for the purpose of record of Licensing Agreement with the Trademarks office is voluntary and not compulsory. But it is advisable to register such agreement with the Trademarks office.

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