A trademark assignment is a legal process in which the owner of a registered trademark transfers their rights and ownership of that trademark to another party. The party transferring the rights is known as the "assignor," and the party receiving the rights is the "assignee." This transfer can include all or some of the associated rights, such as the right to use, license, or enforce the trademark.
Procedure of Trademark Assignment
The procedure for a trademark assignment typically involves the following steps:
- Agreement: The assignor and assignee must enter into a written agreement (Trademark Assignment Deed) that outlines the terms and conditions of the trademark transfer. This agreement should specify the details of the assignment, such as the trademarks involved, the rights being transferred, any limitations, and financial arrangements.
- Due Diligence: Both parties should conduct due diligence to ensure that the trademark is clear of any encumbrances, disputes, or other issues that might affect the validity of the assignment.
- Application: If the trademark is not registered yet, the assignor should first apply for trademark registration in form TM-A. Once the trademark is registered, it can be assigned to the assignee in Form TM-P.
- Application for Approval: The trademark office may require approval for the assignment. You would need to file an application with the relevant authorities to seek approval.
- Registration: After approval (if required), the trademark assignment should be registered with the appropriate trademark office. This registration ensures that the change in ownership is officially recognized.
- Public Notice: It is necessary to publish a notice of the trademark assignment in a designated publication to inform the public of the change in ownership.
Can we transfer the Trademark which is not registered yet?
As for about transferring a trademark that is not registered yet, it is possible, but the assignment process can be more straightforward and legally sound if the trademark is registered. When a trademark is unregistered, the assignment may involve the transfer of other associated rights or goodwill.
Fee Structure & Stamp Duty Payable on Trademark Assignment
The stamp duty payable on a trademark assignment in India can vary depending on the value of the assignment and the specific state in which it is executed. Stamp duty rates are determined by state governments and can differ from one state to another.
- For Non-Start-ups, Small Enterprises, or Other Entities:
- Filing an application electronically: ₹9,000
- Filing in person with the Trademark Registrar: ₹10,000
- For Individuals, Small Enterprises, or Start-ups:
- Filing an application electronically: ₹4,500
- Filing in person with the Trademark Registrar: ₹5,000
- Stamp Duty:
- Stamp duty is calculated at 5% of the application or assignment value, as per the Stamp Duty Act. This is based on the type of trademark applied for and its associated value.
Trademark Registration in India- Forms Applicable
When applying for trademark registration in India, you will need to use specific forms as prescribed by the Indian Trademarks Registry. The forms applicable for trademark registration in India include:
- Form TM-A: This form is used for the application of a new trademark registration. It includes details about the applicant, the trademark, and the goods or services for which the trademark is to be registered.
- Form TM-M: This form is used for making a request for the renewal of a registered trademark. Trademarks in India are typically registered for ten years and can be renewed indefinitely.
- Form TM-R: This form is used for requesting the correction of clerical errors in a registered trademark. It allows for rectification of errors or inaccuracies in the trademark register.
- Form TM-O: This form is used to request a search and issuance of a trademark certificate. It is often used to conduct a trademark search to check the availability of a trademark before filing a new application.
- Form TM-P: This form is used to apply for the post-registration changes, such as changes in name, address, Trademark Assignment and address for service.
- Form TM-C: This form is used to file a notice of opposition against a trademark application. If someone believes that a trademark should not be registered, they can file an opposition using this form.
- Form TM-U: This form is used to apply for the removal of a trademark from the register. It is typically used to cancel a trademark registration.
- Form TM-CH: This form is used to apply for the change of ownership of a registered trademark. It is used when the ownership of a registered trademark is transferred to another entity.
- Form TM-G: This form is used for a request for the government use of a trademark. This means that the government may use a trademark without the owner's permission in certain cases.
Benefits of Trademark Registration
Trademark registration offers several important benefits to businesses and individuals looking to protect their brand identity and intellectual property. Here are some of the key advantages of registering a trademark:
- Exclusive Rights: Trademark registration provides the owner with exclusive rights to use the registered trademark for the goods or services it covers. This exclusivity helps protect the brand from unauthorized use by others.
- Legal Protection: Registered trademarks are legally protected under intellectual property laws. This protection allows the trademark owner to take legal action against anyone who infringes on their trademark rights.
- Deterrent to Infringement: Having a registered trademark acts as a deterrent to potential infringers, as they are less likely to use a trademark that is already registered and legally protected.
- Brand Recognition: Trademarks are essential for building brand recognition and consumer trust. A registered trademark helps establish and protect the brand's identity in the marketplace.
- Asset Value: A registered trademark is considered an intangible asset and can add value to a business. It can be sold, licensed, or used as collateral for loans or financing.
- Geographical Expansion: Trademark registration allows businesses to expand their presence into new geographic regions, as the protection extends to the entire country in which it is registered.
- Global Protection: International trademark registration (e.g., through the Madrid Protocol) can provide protection in multiple countries, facilitating international business operations.
- Protection Against Counterfeiting: Registered trademarks can help prevent the sale of counterfeit goods by providing a legal basis for taking action against counterfeiters.
- Marketing and Advertising: A registered trademark can be used in marketing and advertising materials to enhance brand credibility and trust.
- Legal Recourse: Trademark registration simplifies the process of enforcing trademark rights and seeking remedies in case of infringement, including the ability to seek damages and injunctive relief.
- Long-Term Protection: Trademarks can be renewed indefinitely, providing long-term protection for the brand, as long as the renewal requirements are met.
- Enforceable Rights: Trademark registration strengthens the ability to enforce your rights and protect against unauthorized use of your brand, logo, or slogan.
- Enhanced Consumer Confidence: Consumers tend to trust and prefer products or services with registered trademarks, as they associate them with quality and reliability.
- Distinctive Branding: A registered trademark allows businesses to create unique and distinctive branding elements, which can set them apart from competitors.
- Licensing Opportunities: Trademark owners can license their trademarks to other businesses for use, generating additional revenue.
Conclusion
In Conclusion, Trademark Assignment facilitates the transfer of trademark ownership in India, ensuring legal protection and rights for both assignor and assignee. Trademark Registration, on the other hand, is the foundational step in protecting brand identity and intellectual property, providing exclusive rights and legal safeguards. Together, these processes contribute to brand integrity and business success in India's competitive market.
Disclaimer
The materials furnished here are intended solely for informational purposes. Accessing or utilizing this website and its contents does not create an attorney-client relationship. The information offered on this platform should not be deemed as legal or professional advice and should not serve as a stand-in for seeking legal counsel from a licensed attorney in your jurisdiction.