Trademark Assignment
A trademark is any name, logo, slogan, or other identifying feature of a company's goods or services that has been formally registered or adopted by law.
Thus, the trademark of a company is the most crucial aspect of its existence, and any interference with or illegal use of this trademark by any firm to which it does not belong provides the authorized company the right to legal action.
If a company wants to sell, transfer, or otherwise dispose of a trademark, it can do so in the same way that it can sell, transfer, or otherwise dispose of any other brand asset. Following proper legal procedures, the owner may assign or license the trademark to whomever he chooses.
Trademark assignment refers to the process of transferring ownership of a registered trademark. In contrast, when a trademark is licensed, the third party does not become the new owner and only receives limited permission to use the property.
Trademark Assignment Types
The following are some examples of how a trademark can be applied to a brand:
Complete Assignment- When a trademark and all of its associated rights (including the ability to assign the trademark to others, collect royalties, and so on) are lawfully transferred to another party, this is known as a complete assignment.
Partial Assignment- The owner of the trademark has the exclusive right to sell or license the trademark and collect royalties, but only regarding the specified goods or services. Partial assignment occurs when, for instance, a firm that deals in brands A, B, and C transfers the right to transfer only brand A to another company Y while retaining the right to transfer brands B and C.
Assignment with goodwill- An assignment with goodwill occurs when a trademark owner sells its trademarked product or service alongside the product or service itself.
The assignment without goodwill- Goodwill connected with a product or service is not transferred to a new owner if the original owner places restrictions on the use of the trademark for the same products that the original owner sells. Therefore, both buyers and sellers can utilize the trademark for a wide range of goods and services.
The trademark's assignment or transfer must be recorded with the Registrar of Trademarks.
Advantages of a Trademark Assignment
Marketing of the brand- The marketing plan might be streamlined or simplified as the trademark will already be well-known in the marketplace.
No burden of proof- A record of the trademark transfer in the registration will serve as evidence of your ownership of the trademark.
Value and goodwill of trademark- It makes sense to purchase a well-known and highly valuable trademark in order to secure its exclusive rights in the hands of the buyer.
Time-saving- To register a new trademark takes significantly longer than to transfer an existing one.
Trademark Assignment Eligibility Criteria
Assigning a trademark can be done in two different ways:
Assignment of unregistered trademark: If the trademark is not yet registered or will be registered, the applicant must submit the assignment using Form TM-16.
Assignment of a registered trademark: To transfer ownership of a registered trademark, the applicant must submit either Form TM-23 or Form TM-24.
Trademark Assignment Documents
As part of the Trademark Assignment, the following documents must be submitted:
Assignment Deed
Affidavit of the Assignor
ID Proof of the Assignor
Trademark Assignment Process
Trademark assignment: how to apply for it.
The first stage in assigning a trademark is for the assignor and the assignee to write and file a Trademark assignment agreement with the relevant authorities. After that, the applicant can initiate the trademark assignment process.
Process For Assignment Of Trademark Agreement:
Trademark assignment agreements can be requested either by the assignor or the assignee.
The applicant handles including a complete description of the trademark transfer in the contract.
Applicants must use form TM-P to submit their requests.
Create an application and submit it to ROT. (Registrar of Trademark). In order to qualify, the applicant has only three months from the date of ownership purchase to submit their application.
Before the end of the 3-month trademark assignment period, the Registrar of a Trademark must issue instructions regarding the transfer of goodwill or a registered trademark (can be extended)
The trademark assignment notice must be prepared by the applicant in accordance with the RoT requirements.
A copy of the notice and the Registrar's instructions must be included with the application.
The Registrar handles transferring the trademark from the original to the new owner once the application has been reviewed.
The new owner (the assignee) must register their credentials. The assignee may after that use the trademark according to the terms of the assignment.
Trademark Assignment Process
Here is how to assign a trademark:
The applicant is responsible for submitting an assignment registration request to the ROT. (Registrar of Trademarks).
Once the evaluation is complete, the Registrar will add the assignee's information as the trademark's owner.
In cases where the parties disagree as to whether the assignment is lawful, the Registrar must wait to register the assignment until the relevant court rules on the matter.
The Registrar has three months from the application's receipt date to decide the trademark registration request.
Anyone who has applied to be the owner of a registered trademark can be asked by the Registrar to provide such proof for the documents or statements they have supplied.
If the Registrar determines that any document presented as evidence of a person's title is not properly or suitably stamped, the Registrar will detain the document and handle it according to Chapter IV of the Indian Stamp Act, 1899.
The Registrar must put the following details of trademark registration in the Register:
The Assignee's name and address;
Assignment date;
A thorough summary of the new owner's rights and entitlements.
Assignment Basis
Date of the trademark's registration in the Register.
Fee for Trademark Assignment Licensing
Trademark Assignment using the company's goodwill
1) Trademark pending for Registration:
♢ If the applicant wishes to assign an unregistered or soon-to-be-registered trademark, he must use form TM-M.
♢ Trademark Assignment has a legal fee of 900 rupees for the online processing of an application.
♢ The statutory fee for Trademark Assignment is 1000 rupees for offline application processing.
2) Registered Trademark:
♢ The TM-P form must be submitted if the applicant wishes to request the transfer of a registered trademark.
♢ Trademark assignment applications filed online bear a statutory cost of 9000 Indian Rupees.
♢ The Trademark Assignment filing fee required by law is 10,000 Indian Rupees.
Trademark Assignment without the goodwill of the business
Trademark pending for Registration:
The TM-M form should be used to request the assignment of a pending or unregistered trademark.
Trademark assignment applications submitted online incur a statutory cost of 900 Indian rupees.
Trademark Assignment has a statutory cost of 1000 rupees, payable either online or offline.
Registered Trademark:
The TM-P form must be submitted if the applicant wishes to request the transfer of a registered trademark.
Trademark assignment applications filed online incur a statutory cost of 9000 Indian Rupees.
The Trademark Assignment filing fee required by law is 10,000 Indian Rupees.
Help with Trademark Assignment Filing by Us
Trademark Assignment is a process that we at Certpedia help you with from start to finish.
The following are some of the services we offer:-
The first step is to gather relevant data and start the procedure.
Creating the application
Examining the draft version and adjusting it if needed
Putting in a request In terms of Trademark Assignment, Certpedia is the foremost legal consulting firm.
If you want to assign your trademark, please get in touch with us immediately.