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Trademark Assignment Process

Step 1
Draft Trademark assignment agreement
Step 2
Get trademark assignee to sign it
Step 3
Submit the agreement to the IPR Department
Step 4
Get approval on trademark assignment

Trademark Assignment     

Trademark is a sign, symbol, word, or phrase registered or legalized for the use of representation of a company's product or services.

Hence, any tamper or illegal use of this trademark by any other company it does not belong to gives the authorized company the right to legal action – making the trademark of a company the most important feature of its existence.

As a brand owns a trademark, it can also be sold, transferred, etc., depending on the owner's intention. The owner can transfer the trademark and its rights to anyone he wishes following legal procedures by way of assignment or licensing.

The process of changing ownership of the registered trademark is known as trademark assignment. Whereas in trademark licensing, there is no change in the owner, and a few restricted rights to use the trademark is given to a third party.

Types of Trademark Assignment

A brand can be assigned a trademark in the following ways:

  • Complete Assignment - When the trademark and its rights, such as rights to further transfer, royalties, etc., are legally transferred to another entity, it is known as the complete assignment of the trademark.
  • Partial Assignment – The transfer of ownership is restricted to certain products or services only, and the trademark owner has the right to transfer the trademark further and earn its royalties. For example, company X dealing in brands A, B, and C, transfers the right of brand A to another company Y and retains the right to transfer the brand B and C – it is known as partial assignment.
  • Assignment with goodwill – When the owner transfers the rights and royalties of the trademark while selling the product or service it owns, it is known as an assignment with goodwill.
  • The assignment without goodwill – When the trademark owner restricts the new owner from using the trademark for the products he uses it for, the goodwill associated with the product or service sold is not transferred to the new owner. Thus, sellers and buyers can use the trademark for different products and services.

The Registrar of Trademarks must record the assignment or transfer of the trademark.

Advantages of a Trademark Assignment

 

  • Marketing of the brand – As the trademark will already known in the market, the marketing strategy can be rested or put the least effort into it.
  • No burden of proof – The trademark transfer will be recorded in the registry and already proof of your trademark ownership.
  • Value and goodwill of trademark – If a trademark has a high value and goodwill in the market, it is a good choice to buy such a trademark to retain its privileges with the new buyer.
  • Time-saving – The time spent on a new trademark registration is much higher than on trademark assignment.

Eligibility Criteria for Trademark Assignment

There are two ways to register for a trademark assignment:

Assignment of unregistered trademark: The applicant must file the trademark assignment in Form TM-16 if the said trademark is unregistered or is going to be registered.

Assignment of a registered trademark: The applicant must file the trademark assignment in Form TM-23 or TM-24 if the said trademark is registered.

Documents Required for Trademark Assignment

In regard to the Trademark Assignment, following documents are needed:

  • Assignment Deed
  • Affidavit of the Assignor
  • ID Proof of the Assignor

Process for Trademark Assignment 

How to apply for a Trademark assignment?

The first step to proceeding with a trademark assignment is to draft and register a Trademark assignment agreement between the assignor and assignee with the authorities. Then, the applicant can file for the trademark assignment process.

Procedure For Trademark Assignment Agreement:

  • The assignor or the assignee can both file an application for the trademark assignment arrangement
  • The applicant must mention all the trademark transfer details in the agreement.
  • The applicant must file the application in the form TM-P.
  • Draft the application and file it with the roT (Registrar of Trademark). The applicant must file the application within 3 months of proprietorship acquisition.
  • When there is a trademark assignment with goodwill or of a registered trademark, the direction from the Registrar of a trademark is mandatory before the expiry of 3 months (can be extended)
  • The applicant must create the trademark assignment advertisement according to the RoT specification.
  • The applicant must submit a copy of the advertisement and a copy of the Registrar's directions.
  • After assessing the application by the Registrar, the Registrar must transfer the trademark from the original to the new owner.
  • Assignee credentials must be registered as a new proprietor. After this, the assignee can use the trademark as per the terms of the agreement.

Procedure for Trademark Assignment

The Trademark Assignment process is as follows:

  • The applicant must apply for registration of assignment to the RoT (Registrar of Trademarks).
  • After the assessment, the Registrar must enter the details of the assignee as the owner of the trademark assigned to him.
  • If the validity of the assignment is in dispute between the parties, the Registrar must refuse to register the assignment until the competent court determines the parties' rights.
  • The Registrar must dispose of the application for trademark registration within 3 months from the date of receipt of the application.
  • The Registrar can call any person who has applied to be an owner of a registered trademark to furnish such proof for the documents or statements they have submitted.
  • Where, in the opinion of the Registrar, any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899.

The Registrar must enter the details of trademark registration in the Register the particulars as follows-

  • Name and address of the Assignee;
  • Date of assignment;
  • A detailed description of the rights and entitlements assigned to the new owner.
  • Basis of Assignment
  • Date of Entry of the trademark in the Register.

Trademark Assignment Licensing fee

Trademark Assignment with the goodwill of the business

Ø  Trademark pending for Registration:

  • If the applicant wants the assignment of an unregistered or to-be registered trademark, he must file for it in form TM-M.
  • For online application processing, the statutory fee for Trademark Assignment 900 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment 1000 rupees. 

Ø  Registered Trademark:

  • If the applicant wants the assignment of a registered trademark, he must file for it in form TM-P.
  • For online application processing, the statutory fee for Trademark Assignment 9000 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment 10000 rupees. 

Trademark Assignment without the goodwill of the business

Trademark pending for Registration:

  • If the applicant wants the assignment of an unregistered or to-be registered trademark, he must file for it in form TM-M.
  • For online application processing, the statutory fee for Trademark Assignment 900 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment 1000 rupees. 

Ø  Registered Trademark:

  • If the applicant wants the assignment of a registered trademark, he must file for it in form TM-P.
  • For online application processing, the statutory fee for Trademark Assignment 9000 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment 10000 rupees.

Our Assistance to file the Trademark Assignment

We, at Registrationwala provide end to end solutions for Trademark Assignment.

Our services include:-        

  • Collection of information and starting the process
  • Drafting the application
  • Reviewing the draft and making changes if necessary

Filing the application Registrationwala.com is a leading legal consultancy firm providing the comprehensive services relating to Trademark Assignment.

Contact us now if you seek to assign your trademark to someone else.

Frequently Asked Questions –FAQs About Trademark Assignment

Q.1) What is a Trademark?

A. Trademark is a sign, symbol, word, or phrase registered or legalized for the use of representation of a company's product or services. Hence, any tamper or illegal use of this trademark by any other company it does not belong to gives the authorized company the right to legal action – making the trademark of a company the most important feature of its existence.

Q.2) What is a Trademark assignment?

A. As a brand owns a trademark, it can also be sold or transferred, depending on the owner's intention. In addition, the owner can transfer the trademark and its rights to anyone he wishes following legal procedures by way of assignment or licensing. The process of changing ownership of the registered trademark is known as trademark assignment.

Q.3) How is Trademark Licensing different from Trademark assignment?

A. In trademark licensing, there is no change in the owner, and a few restricted rights to use the trademark is given to a third party. This is not the case with the trademark assignment. In trademark assignment, the ownership of the trademark is transferred to the third party which its rights, loyalties, and entitlements.

Q.4) What are the different types of trademark assignments?

A. A brand can be assigned a trademark in the following ways:

  • Complete Assignment - When the trademark and its rights, such as rights to further transfer, royalties, etc., are legally transferred to another entity.
  • Partial Assignment – The transfer of ownership is restricted to certain products or services only, and the trademark owner has the right to transfer the trademark further and earn its royalties.
  • Assignment with goodwill – When the owner transfers the rights and royalties of the trademark while selling the product or service it owns.
  • Assignment without goodwill – When the trademark owner restricts the new owner from using the trademark for the products he uses it for, the goodwill associated with the product or service sold is not transferred to the new owner.

Q.5) What are the ways to register a trademark assignment?

A. There are two ways to record a trademark assignment:

Assignment of unregistered trademark: Form TM-16 must be filled and requested for an unregistered trademark to be assigned or transferred.

Assignment of a registered trademark: Form TM -23 or Form TM-24 must be filled and requested for any transfer or assignments of registered trademarks.

Q.6) Why should one opt for trademark assignment?

A. There are various advantages of assigning a trademark to someone or purchasing a company's trademark rights. Some of them are listed below:

Marketing of the brand – As the trademark will already known in the market, the marketing strategy can be rested or put the least effort into it.

No burden of proof – The trademark transfer will be recorded in the registry and already proof of your trademark ownership.

Value and goodwill of trademark – If a trademark has a high value and goodwill in the market, it is a good choice to buy such a trademark to retain its privileges with the new buyer.

Time-saving – The time spent on a new trademark registration is much higher than on trademark assignment.

Q.7) What are pre-conditions that the trademark assignment applicant must observe?

A. There are two ways to register for a trademark assignment:

Assignment of unregistered trademark: The applicant must file the trademark assignment in Form TM-16 if the said trademark is unregistered or is going to be registered.

Assignment of a registered trademark: The applicant must file the trademark assignment in Form TM-23 or TM-24 if the said trademark is registered.

Q.8) What are the documents required for the trademark assignment process?

A. The following documents must be submitted along with the trademark assignment application:

  • Assignment Deed or Trademark assignment agreement.
  • Affidavit of the Assignor
  • ID Proof of the Assignor

Q.9) What is the licensing fee for a trademark assignment with goodwill of the business?

A. Trademark Assignment with the goodwill of the business

For Trademark Pending Registration:

  • If the applicant wants the assignment of an unregistered or to-be registered trademark, he must file for it in form TM-M.
  • For online application processing, the statutory fee for Trademark Assignment is 900 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment is 1000 rupees.

For Registered Trademark:

  • If the applicant wants the assignment of a registered trademark, he must file for it in form TM-P.
  • For online application processing, the statutory fee for Trademark Assignment is 9000 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment is 10000 rupees.

Q.10) What is the licensing fee for a trademark assignment without the business's goodwill?

A. Trademark Assignment without the goodwill of the business

For Trademark Pending Registration:

  • If the applicant wants the assignment of an unregistered or to-be registered trademark, he must file for it in form TM-M.
  • For online application processing, the statutory fee for Trademark Assignment is 900 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment is 1000 rupees.

For Registered Trademark:

  • If the applicant wants the assignment of a registered trademark, he must file for it in form TM-P.
  • For online application processing, the statutory fee for Trademark Assignment is 9000 rupees.
  • For offline application processing, the statutory fee for Trademark Assignment is 10000 rupees.

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