Trademark Assignment
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What is the Trademark Assignment?
Trademark rights are exclusive and no one other than the Proprietor or an authorized person can use it. For anyone to be an authorized person, having a valid and legal agreement is essential. Trademark Assignment is in layman terms transfer of rights from the Proprietor to any other third person and the assignment agreement facilitates in the change in ownership.
In essence, a trademark assignment establishes the rightful owner of the trademark by transferring all associated rights, privileges and interests from older owner (assigner) to new owner (assignee). This agreement includes various crucial details, such as complete information of both the parties, date of the assignment, clear identification of trademark(s) being transferred, scope of assignment, consideration and any accompanying goodwill or related intellectual property rights.
Additionally, the trademark assignment may incorporate specific conditions or limitations related to the trademark, it may require the assignor to provide assistance or fulfill certain obligation to ensure a smooth transition.
The primary purpose of the trademark assignment is to grant either full or partial legal ownership and control over the trademark, enable them to exclusively use, license, enforce and protect it. To ensure transparency and public awareness of the change in ownership, the assignment needs to be recorded and is suggested to file in the trademark application as well.
It is essential to recognize that the specific requirements and procedures for trademark assignments can vary across jurisdiction and legal frameworks. To ensure compliance with local laws and execute a trademark assignment correctly, seeking guidance from a qualified intellectual property attorney or legal profession is strong recommended.
Types of trademark assignments
The type of assignment depends on the extent of rights granted or whether the goodwill of the business is being assigned or not:
- Complete assignment- This type of trademark assignment denotes a comprehensive transfer of all rights, title, and interest in a trademark from the assignor to the assignee. It effectuates an absolute change in ownership, thereby vesting the assignee with complete dominion and control over the trademark.
- Partial assignment– A partial assignment contemplates the selective transfer of specific rights or facets of the trademark, while the assignor retains ownership over the remaining rights. The assignor and assignee delineate and stipulate the precise parameters of the transfer, which may encompass restricted usage rights, demarcated geographical territories, designated goods or services, or any other discrete components of the trademark.
- Assignment with goodwill of business– In this particular assignment, not only is the trademark itself conveyed, but also the attendant goodwill of the business or brand. Goodwill encompasses the intangible assets comprising the favorable reputation, customer loyalty, and market standing associated with the trademark. The assignee not only acquires the tangible mark but also inherits the intangible assets integral to the positive business repute.
- Assignment without the goodwill of business– This type of assignment focuses exclusively on the transfer of the trademark rights sans the accompanying goodwill. The assignee assumes ownership solely over the tangible trademark, while the assignor retains sole proprietorship of the intangible elements encompassing the business reputation.
Benefits of Trademark Assignment
Trademark assignments offer several benefits to both assignor (current owner) and assignee (new owner). Here are some key advantages:
- Brand Expansion and Market Presence: By acquiring trademarks through assignments, businesses can expand their brand portfolio, enter new markets, or strengthen their market position, contributing to their overall growth and success.
- Prevention of Legal Disputes: Trademark assignments help avoid potential ownership disputes by clearly documenting the transfer of ownership, reducing the risk of costly legal battles in the future.
- Intellectual Property Protection: Assignments play a vital role in safeguarding intellectual property rights. The assignee can actively enforce the trademark against infringers and take legal action if necessary, protecting the brand’s reputation and market exclusivity.
- Simplified Licensing and Enforcement: With a trademark assignment in place, the assignee has documented ownership rights, making it easier to enter into licensing agreements with third parties and take appropriate action against potential infringements.
How to Assign a Trademark in India?
- Prepare an Assignment Agreement: Create a legal document that clearly states the intention to transfer the ownership of the trademark from the current owner (assignor) to the new owner (assignee), including important details such as names, addresses, and terms of the transfer.
- Execute the Assignment Agreement: Both the assignor and assignee need to sign the assignment agreement, showing their consent and agreement to the transfer. Make sure to use the appropriate stamp paper as per the state’s stamp duty requirements.
- Obtain Consent from Other Parties: If there are any existing licenses or agreements related to the trademark, seek the necessary consent from licensors or other parties involved to ensure a smooth transfer.
- File and Submit the Appropriate Form: File the form with the relevant Trademark Registry in India and pay the required fee. This initiates the official process of transferring the trademark.
- Record the Assignment: Once the form is accepted by the Registry the same is taken on record.
Fees for Trademark Assignment in India
The fees for a trademark assignment in India are subject to the regulations and guidelines set by the Trademarks Registry, here are the general fees applicable for a trademark assignment in India:
- Assignment Form Fee: If the trademark/s is pending then the form TM-M has to be filed, the government fees for which is 900/- per mark per class.
If the trademark/s is registered then the form TM-P has to be filed the government fees for which is 9000/- per mark per class.
- Stamp Duty: Stamp duty is applicable for executing the assignment agreement on a non-judicial stamp paper. The stamp duty amount varies depending on the state where the agreement is executed and the value of the trademark assignment.
Documents that are required for the Trademark Assignment:
The details which are required for trademark assignments are as follows-
- Assignment Agreement is the core document that outlines the terms and conditions of the trademark transfer.
- Power of Attorney refers to the document authorizing a representative or attorney to act on behalf of the assignor or assignee in the assignment process.
- A No Proceeding Certificate has also to be drafted and signed which basically states that there is no pending proceeding with regards to the trademark.
Details that need to be mentioned in the Assignment Agreement:
- The details of the trademarks that are being assigned.
- The consideration that is being paid by the assignee to the assignor for the assignment.
- The scope of assignment as to what rights are being assigned to the assignee.
- Any other detail that needs to be penned down.
How to Assign a Trademark in India?
- Prepare an Assignment Agreement: Create a legal document that clearly states the intention to transfer the ownership of the trademark from the current owner (assignor) to the new owner (assignee), including important details such as names, addresses, and terms of the transfer.
- Execute the Assignment Agreement: Both the assignor and assignee need to sign the assignment agreement, showing their consent and agreement to the transfer. Make sure to use the appropriate stamp paper as per the state’s stamp duty requirements.
- Obtain Consent from Other Parties: If there are any existing licenses or agreements related to the trademark, seek the necessary consent from licensors or other parties involved to ensure a smooth transfer.
- File and Submit the Appropriate Form: File the form with the relevant Trademark Registry in India and pay the required fee. This initiates the official process of transferring the trademark.
- Record the Assignment: Once the form is accepted by the Registry the same is taken on record.
Filing of a proper trademark assignment is crucial for enforcing and exercising trademark rights in the future and the same consists of various elements which need minute and precise drafting as well as cross checking during the filing of the relevant form and documents. It is therefore recommended to reach out to professionals such as Mark-o-Legal in order to have a seamless transfer of trademark rights through assignments.