Sale or Transfer of Trademark To other Individual/Legal Entity

A trademark is a unique symbol or word(s) used to represent a business or its products. It is an easily recognizable symbol, phrase, or word that denotes a specific product. It legally differentiates a product or service from all others of its kind and recognizes the source company’s ownership of the brand. Once it is registered, it is valid for 10 years and that same symbol or series of words cannot be used by any other organization.

Trademarks can be assigned, merged and transmitted under The Trademarks Act, 1999 (“Act”). Trademarks are transferred to another person or entity by assignment, merger or transmission. When such transfer happens, the party who acquires it gets a right to use the trademark. The acquiring party can use it according to the terms of the transfer.

Types of Trademark Assignment/transfer in India:-

1. Complete Assignment:-

In a complete assignment, the owner of the trademark transfers all the rights with respect to the trademark, including the rights of further transfer, earn royalties, etc., to another entity.

(E.g. Mr. A, the proprietor of a brand, sells his mark completely through an agreement to Mr. B. After this Mr. A does not retain any rights with respect to the brand).

2. Partial Assignment

In a partial assignment, the transfer of ownership is restricted to specific product or service only. The owner may retain the right to further transfer, to earn royalties etc.

For example, A, owner of a tea and a biscuit brand, transfers proprietary rights only with respect to the tea brand and retains the rights over the biscuit brand, this is said to be a partial assignment.

3. Assignment with goodwill

When goodwill of trademark is assign by assignor to assignee, then assignee is free to use the trademark assigned to him for all goods or services including  for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.

4. Assignment without goodwill

where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.

Documents required for trademark assignment in India:-

• Certificate of Trademark Registration (if any).
• The assignor and assignee’s valid documents.
• No Objection Certificate (NOC) from the original owner of the registered trademark.

Advantages of a Trademark Assignment

Unlock Value

With the help of the assignment agreement, the owner of the brand is able to unlock the value of the brand which was at this point only had value on papers. The assignee on another hand could be significantly better off entering a market with an already well-known brand, rather than building a new one entirely.

Valid Proof

In case of any dispute which is related to the trademark, legal rights would easily be established only through the deed of assignment. The Registrar ensures that all the checks are in place by examining the validity of all the clauses which are mentioned in the agreement and publishing the assignment in the Trade Marks Journal.

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Disclaimer:- The entire contents of this document have been prepared on the basis of relevant provisions and rules and as per the information existing at the time of the preparation. Although care has been taken to ensure the accuracy, completeness and reliability of the information provided, I assume no responsibility therefore. Users of this information are expected to refer to the relevant existing provisions of applicable Laws. The user of the information agrees that the information is not a professional advice and is subject to change without notice. I assume no responsibility for the consequences of use of such information.