In addition to the general rights of ownership which are available to the assignor, the trademark owner (i.e., the assignor) also has the right to sell, license, or transfer the trademark. Such a transfer is made possible through the Trademark Assignment Agreement and Trademark Licensing Agreement.
In this article, we discuss what trademark assignment is, what kinds of trademark assignments exist, what the pre-requisites are, and what the procedure for trademark assignment is.
Assignment of trademarks: Understanding the concept
Under section 37 of the Trademark Act, 1999, trademark assignment in india describes the process of transferring the right, interest, and title in a trademark and a brand mark to a third party.
There are several companies that offer trademark assignment services, but the process of transferring the right and ownership of the trademark to another company or person can be described very simply.
Following is a list of the advantages that can be gained by both the owner and buyer by engaging in trademark assignment (concerning both parties):
- It is possible for a trademark owner to cash in the value of his brand when he assigns his trademark.
- Using trademark assignments, the assignee can acquire a brand that has already gained recognition.
- Assignees and assignors benefit from trademark assignments by expanding their respective businesses.
- It would be possible for the assignor or assignee to establish their legal rights if there is any dispute concerning a trademark assignment agreement.
The types of assignments of trademarks
Trademark assignments can be classified into four types:
- Partial assignment,
- Complete assignment,
- An assignment with Goodwill, and
- An assignment without Goodwill/ Gross assignment.
Following is a brief explanation of all four types of trademark assignments:
1. Partial assignment-
A partial assignment involves transferring ownership of specific products or services only to the assignor.
2. Complete assignment-
In a complete assignment, the assignor transfers the rights to all trademarks that have been registered to the assignee of the registered trademark.
3. An assignment with Goodwill-
Essentially, when a trademark is assigned with the concept of goodwill attached to it, the assignor is transferring both the rights to the trademark as well as the value of the trademark to the assignee.
4. Gross assignment or Assignment without Goodwill-
This type of trademark assignment involves restricting the buyer’s rights while transferring the trademark. As a result, the assignor restricts the buyer from using the brand the assignor already uses. In other words, the assignee does not get the goodwill attached to the brand.
An overview of the requirements and procedure for assigning a trademark
In order to assign a trademark, the following conditions must be met:
- Written signatures are required for trademark assignments.
- There must be two identifying parties for the assignment:
- Assignors (owners of trademarks); and
- Trademark assignees (buyers).
- A trademark assignment must be done with the consent and intention of the assignor.
- In order for a trademark to be assigned for proper consideration, the consideration must be adequate.
- There must be proper consideration for the trademark assignment-
- Agreement for trademark assignment,
- Certificate of registration of a trademark,
- A letter of authorization from the assignor,
- Documents from both assignors and assignees identified.
Following is a description of how to apply for a trademark assignment:
- The process involves the filing of an application for trademark assignment in the form TM-24 or, if there is a joint request, in the form TM-23. A trademark assignment application can be filed either by the assignor, or by the assignee.
- The TM-P form has been filed.
- A trademark assignment should be filed with the Registrar of trademarks within six months of when the trademark is acquired.
- As part of the trademark registration process, the registrar of the trademark specifies the manner of announcing the trademark assignment.
- In order to assign a trademark, the applicant must make an advertisement in accordance with the registrar’s specification.
- An applicant must submit a copy of the advertisement and the registration officer’s direction to the registration office.
After the registrar has been satisfied with the application, the registrar will register the assignee’s name as the trademark’s owner.