Trademark in general means any design, name or symbol used to represent and differentiate your business or products. Trademarks are generally registered with the Registrar of Trademarks with the help of third-party trademark agents or trademark attorneys. After the registration of trademarks these are advertised in the trademark journal by the Registrar. This comprehensive guide explores the types of trademark assignments, procedural requirements, necessary documents, and frequently asked questions, ensuring clarity and compliance throughout the transfer process.
Now, a question might strike our minds that are these registered trademarks transferrable/assignable?
- Firstly let us discuss what does Trademark Assignment means?
- Trademarks are considered to be as property/assets of its owner. Therefore, like any other property, it can also be transferred to another person by its owner. [Section 37 of the Trade Marks Act, 1999 and Chapter V (Rule 75 to 85) of Trademark Rules 2017]
- Assignment takes place by coming in Trademark Assignment Agreement in writing. The transferring party is called the assignor, and the receiving party is called the assignee.
TYPES OF TRADEMARK ASSIGNMENT:
There can be four types of Trademark assignment-
1. Partial Assignment
Under Partial Assignment, Assignor transfers only limited ownership regarding specific products/services.
2. Complete assignment
Complete assignment means, when the assignor transfer the entire rights of the registered trademark to assignee.
3. An assignment with Goodwill
Under this type of assignment the owner transfer the value of the trademark along with its rights. After the assignment, assignee will be able to use the trademark for any of class of good & services.
4. Assignment without Goodwill
Under Assignment without Goodwill, assignor transfer the rights of the registered trademark with the restriction to use it for the goods & services already in use by the assignor.
PROCEDURE FOR TRADEMARK ASSIGNMENT
1. An application for the trademark assignment is made in FORM TM-P to the register of trademarks.
2. The assignment should be in trademark assignment agreement.
3. Application should be made within a period of six months from the date of assignment to the registrar. However, it can be filed after six months by paying additional fees as may be prescribed.
4. An advertisement will be published on the directions specified by the registrar.
5. A copy of the advertisement along with registrar’s directions will be submitted to the office of the registrar of trademarks.
6. The registrar will on the basis of application and the required documents will register the assignee as the proprietor of the trademark.
FREQUENTELY ASKED QUESTIONS:
1. What are the Pre-Requisites for Assignment of Trademark?
- Assignment of Trademark must be in writing.
- Parties to the assignment must be identified i.e Assignor and Assignee.
- The assignor must give his consent and intent for the trademark assignment.
- There should be proper and adequate consideration for the assignment.
2. What are the documents required for Trademark of Trademark?
Below mentioned documents are required to be submitted along with FORM TM-P:
- Trademark assignment agreement.
- Trademark certificate.
- NOC from the assignor.
- Identification documents of the assignor and assignee.
- Board resolution for assignment of trademark, wherever required
- Power of Attorney in favour of agent/attorney
3. What are benefits of Trademark Assignment?
Benefits of Trademark Assignment are as follows:
- Availability of liquid funds to the assignor.
- Assignee enjoys the advantage of already registered brand.
- Helps in business expansion.
- Quick and cheap settle between the parties.
4. What are the things to be kept in mind while drafting a Trademark Trademark Agreement?
- Agreement should clearly indicate the type of assignment whether it is with or without the goodwill of the business.
- The purpose of the assignment should be clearly stated.
- Values and Rights transferred to the assignee should be mentioned.
- The place and date of agreement execution must be mentioned in the Agreement
- The agreement should be duly stamped and notarised as per the applicable Stamp Act.
- The date and day of the assignment to the assignment must be mentioned.
- It should state whether it would be binding on the legal heirs of the assignor and assignee.
- The rights of the trademark should not be detrimentally to interest of the parties and general public.
- The agreement should be duly signed by parties and witnesses.
Also, it is to be kept in mind that normally it takes around a year for the trademark to be actually in the name of assignee as per the Trademark Portal. However, once we have submitted the requisite documents in Form TM-P, our job is done and normal follow needs to be done. Just once, during the process of assignment, the Registrar of Trademark asks for no objection certificate via email from assignor.
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{The author i.e., Mrs. Kajal Goyal is a Company Secretary in Practice and can be reached at (M) +91-9999952595 and (E) [email protected]}
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