What is Trademark Assignment?
The Trademark Act of 1999 defines trademark assignment under section 37. By definition, trademark assignment refers to the transfer of the right, interest, and title of the owner of a trademark or brand mark.
Owners of trademarks may transfer their trademarks in the same way that they may transfer possessions. An assignment is one way that a trademark can be transferred. Transferring rights, interests, titles, and advantages from one individual to another is known as assignment. To assign a trademark is to give another individual ownership of the trademark.
By whom can a trademark be assigned?
According to Section 37 of the Trade Marks Act of 1999, the owner of a trademark who is listed as such in the register of trademarks is entitled to assign a trademark and be paid for it. As a result, the owner of a trademark may transfer it to another individual.
Types of trademark assignment
The following are the many types of trademark assignments:
- Complete Assignment
The owner of a trademark distributes full rights in the trademark to another party, including the ability to receive royalties and make additional transfers, among other rights.
- Partial Assignment
The owner of a trademark transfers ownership of the trademark to another party with regard to particular products or services exclusively. The trademark ownership transfer is limited to particular goods or services.
- Assignment with Business Goodwill
The owner of a trademark transfers to another individual the rights, privileges, and values connected with that trademark. When a trademark is granted with goodwill, the assignee is free to use it for any kind of products or services, including those that the assignor had previously used.
- Assignment without the Business’s Goodwill
The owner of the trademark transfers all rights and entitlements in the trademark to the assignee with regard to goods and services that are not being used. If there is an assignment without goodwill, the assignor limits the transfer of the trademark rights. The assignor grants the assignee no right to use the trademark in connection with any products or services that the assignor has previously used.
Requirements for Trademark Assignment
- A written trademark assignment is required.
- The trademark owner, or assignor, and the trademark buyer, or assignee, shall be the two identifiable parties in the assignment.
- The assignor must consent to the trademark assignment and have the necessary purpose.
- A suitable and sufficient payment (money) shall be paid for the trademark assignment.
Trademark Assignment Procedure
The following are the steps involved in trademark assignment in India:
- A trademark assignment agreement is used by the trademark owner, or assignor, to transfer ownership of the trademark to the assignee.
- By submitting an application of a trademark assignment in Form TM-P to the trademark registry, the assignor, assignee, or both may jointly apply to register the assignment.
- The trademark registrar must receive Form TM-P within six months of the assignment data.After six months of assignment, the application may be submitted, although the cost may change correspondingly.
- In the way and within the time frame specified by the trademark registrar, the assignment must be disclosed.
- The trademark registrar’s office should receive a copy of the advertising and the registrar’s instructions.
- The registrar of trademarks will register the assignee as the trademark owner and record the assignment specifications in the register upon receipt of the trademark assignment application (form TM-P) and necessary documentation.
Documents Needed for Trademark Assignment
Form TM-P must be filed with each of the following documents to the trademark registrar:
- Trademark assignment agreement.
- Certificate of Trademark.
- The assignor’s NOC.
- documents proving the assignor and assignee’s identities.
Advantages of Assigning Trademarks
- The process of trademark assignment allows the owner of the trademark to utilize the full value of their brand.
- Through trademark assignment, the assignee acquires the rights to an existing brand.
- The trademark assignment facilitates the growth of the assignee’s and assignor’s respective businesses.
- Both the assignor and the assignee can demonstrate their legal rights in the event of a dispute thanks to the trademark assignment agreement.
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FAQ’s
It can be partial, yes. If both parties consent and the terms are made explicit in the assignment agreement, it is possible to transfer only a portion of the rights, title, and interest in a trademark.
In India, a foreign corporation is able to assign a trademark, yes. All relevant rules and regulations must be followed, though, and the required paperwork needs to be sent in to the Trademark Registry in order for the assignment to be registered.
The time required to finish a trademark transfer in India might vary based on a number of variables, such as the assignment’s complexity and the Trademark Registry’s effectiveness. The entire procedure, from writing the agreement to registering the assignment, usually takes six to twelve months.
Because it offers clarity and certainty about the transfer of trademark ownership, a trademark assignment agreement is crucial. It aids in defending the rights of the assignee, or new owner, and the assignor, or present owner.
Yes, if it is determined that a trademark transfer or assignment violates any laws, or if there are disagreements over the legitimacy of the assignment agreement, it may be challenged. Making ensuring the project is completed in accordance with the relevant rules and regulations is essential.
It is possible for a person to assign a trademark. The trademark may be transferred by the owner to a business or to another person.
It is true that owning a trademark may bring in money. The trademark owner has three options: sell the trademark, grant licenses to third parties, or utilize the brand to make money through advertising or other business ventures.