A Trademark Assignment is a legally binding document that empowers the registered owner of a trademark to transfer ownership and issue receipts for any consideration involved in the assignment. Through this process, the assignor relinquishes their rights to a registered word, phrase, symbol, or design, effectively passing them on to a new owner. This transfer involves the transfer of the owner's power, title, and interest in the trademark.
In essence, the Assignment and Transmission of a Trademark represent the mechanism through which trademark ownership changes hands, encompassing full or partial rights as stipulated in the terms and conditions established by the existing trademark owner. Both registered and unregistered trademarks can be assigned and transmitted from one party to another, with or without the goodwill of the associated business. This assignment is formalized through a trademark assignment agreement, which serves to solidify the transfer of ownership and associated rights.
As per Section 37 of the Trade Marks Act, 1999, it explicitly states that the individual registered as the proprietor of a trademark in the register of trademarks holds the authority to assign the trademark to another party and receive consideration (compensation or payment) for such an assignment. Consequently, a trademark proprietor possesses the legal right to transfer trademark ownership to a different individual or entity.
Types Of Trademark Assignment There are several forms of trademark assignments:-
- Complete Assignment: This involves transferring all rights associated with a trademark, including the right to use it, earn royalties, and further transfer it to others. The original owner loses all rights to the trademark.
- Partial Assignment: In a partial assignment, specific rights related to particular services or goods are transferred. Ownership is limited to those specific services or products.
- Assignment with Goodwill of Business: This type of assignment includes the transfer of the trademark and all associated values, advantages, and reputation. The assignee can use the trademark for any category of goods or services, including those previously used by the assignor.
- Assignment without the Goodwill of Business: In this scenario, rights to goods or services not currently in use are transferred. The assignor restricts the transfer of rights regarding goods or services already in use.
Procedure To initiate the trademark assignment process, follow these steps:-
- Submit Application: Prepare an application for the trademark assignment under form TM-P, as specified in Rule 75 of Trademark Rules 2017. The application can be made by the assignee (new owner) or the assignor (current proprietor).
- File with Registrar: Submit the completed application to the Registrar of Trademarks within 3 months of obtaining proprietorship.
- Registrar's Direction (for assignments with goodwill or registered trademarks): If the assignment involves goodwill or a registered trademark, obtain a direction from the Registrar of Trademarks, ensuring this is done within the 3-month period, with the possibility of extension if needed.
- Advertisement of Assignment: Advertise the trademark assignment as per the Registrar's instructions once you have the Registrar's direction. Submit a copy of the advertisement, along with the Registrar's direction, to the authorities.
- Transfer of Trademark: Once the Registrar approves all documentation, the trademark is officially transferred from the original owner to the new owner (assignee).
- Registration of New Proprietor: Register the name of the assignee as the new proprietor of the trademark. This formalizes the transfer of ownership.
- Usage of Trademark: The assignee (new owner) can use the trademark based on the terms and conditions specified in the agreement.
Benefits Of Trademark Assignment Trademark assignment offers several advantages:-
- Leveraging Brand Value: It allows the trademark owner to capitalize on the brand's value.
- Recognized Brand: The assignee benefits from gaining rights to an established and recognized brand.
- Business Expansion: Both the assignor and assignee can use trademark assignment to facilitate business expansion.
- Clear Legal Framework: Through a trademark assignment agreement, both parties can establish their legal rights and obligations clearly.
Conclusion:-
Trademark assignment serves as a mutually beneficial arrangement for both the trademark owner and the recipient. It enables them to harness the brand's value, expand their business opportunities, and establish a clear legal framework for the assignment, creating a win-win scenario for all parties involved.
Disclaimer:-
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