INTRODUCTION
Assignment of a trademark is the way by which the owner of a trademark (registered or unregistered) absolutely transfers the ownership of the trademark to another person or entity.The two parties to an assignment are; the assignor, and the assignee. The assignor assigns or absolutely transfers his title, rights and interests over the trademark to the assignee. A trademark can be assigned either with goodwill or without goodwill.
Assignment with goodwill:
- A trademark is assigned with goodwill, when the registered proprietor of the trademark assigns the trademark and the right to use the trademark in respect of the goods or services that the trademark is already used for by the proprietor.
Assignment without goodwill:
- A trademark is assigned without goodwill, when the rights to the trademark are assigned in respect of all goods and services, other than those, for which the trademark is already used for by the proprietor.
PREREQUISITES TO DRAFT AN ASSIGNMENT AGREEMENT
- The assignment agreement must be in writing;
- There must be consideration. It must be stamped. The stamp duty has to be calculated on the basis of the consideration;
- The effective date of the assignment must be laid down clearly;
- The most important part of an assignment deed is to mention if the assignment is along with the goodwill or not.
- The Deed must contain, inter alia, the particulars of the assignor and assignee, the details of the registered trademark or pending registration, consideration payable for the assignment, whether the assignment is with goodwill or without goodwill, and the details with respect to the use of the trademark.
PROCEDURE FOR RECORDAL OF ASSIGNMENT/ TRANSMISSION
An application to record assignment of a pending trademark can be made on Form TM-M and an application to record assignment of a registered trademark can be made Form TM- P.
In order to record assignment without goodwill of business, the Applicant needs to make an application under Form TM-P within six (6) months from the date of the assignment, further extendable by three (3) months as per prescribed forms, requesting the Registrar to advertise the assignment, that is give notice to the public of the assignment without goodwill of business. Post such advertisement, the application for recording the assignment can be filed with the Trade Marks Registry. Such a request shall be accompanied with a copy of the application as well as a copy of the advertisement notice as issued by the Registrar.
Documentary Requirements
- Assignment Deed: A duly stamped and notarized assignment deed. For Applicants outside India, the assignment deed must to be notarized in the country where it is executed, and the same can be stamped in India.
- Affidavit of no-pending litigation: In order to process such assignment requests, the Indian Trade Marks Registry has now made it mandatory to submit an affidavit attesting that there is no pending litigation and that the ownership of the trademarks are not in dispute.
FAQS
In case of an assignment of a trademark, there is a transfer in the ownership of the trademark registration and in case of licensing, the proprietary rights of the trade mark continue to vest with the original owner but only few restricted rights to use the brand/trademark are given to the third party.
Assignment of a trademark is a process in which the owner of the trademark transfers theownership and proprietary rights of the trademark either with or without the goodwill of the business.
Assignment can be in following manner:
- Complete Assignment to another entity;
- Assignment to another entity but with respect to only some of the goods/ services;
- Assignment with goodwill;
- Assignment without goodwill
A trade mark is generally assigned by way of a properly executed and notarized Trademark Assignment Agreement which pertains to the transfer of the mark from the owner to another. Along with the Trademark Assignment Agreement, it is mandatory to submit an affidavit attesting that there is no pending litigation and that the ownership of the trademarks are not in dispute.
Once a trademark is assigned it is necessary to record the change in ownership with the Trademark Registry. Specific forms with fees along with the corresponding Assignment Deed have to filed to ensure that the records reflect the ownership details. The Trade Marks Act states that the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.
In case of an assignment of a trademark, there is a transfer in the ownership of the trademark registration and in case of licensing, the proprietary rights of the trade mark continue to vest with the original owner but only few restricted rights to use the brand/trademark are given to the third party.
Assignment of a trademark is a process in which the owner of the trademark transfers the ownership and proprietary rights of the trademark either with or without the goodwill of the business.
A trade mark is generally assigned by way of a properly executed and notarized Trademark Assignment Agreement which pertains to the transfer of the mark from the owner to another. Along with the Trademark Assignment Agreement, it is mandator to submit an affidavit attesting that there is no pending litigation and that the ownership of the trademarks are not in dispute.
Once a trademark is assigned it is necessary to record the change in ownership with the Trademark Registry. Specific forms with fees along with the corresponding Assignment Deed have to filed to ensure that the records reflect the ownership details. The Trade Marks Act states that the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.