Similarly as on account of physical property, for example, land, each proprietor of a Brand or Trademark has the privilege to sell, permit, move, and so forth its individual image or trademark as per lawful strategies. A brand or Trademark proprietor can move his privileges as for his trademark either by method for assignment or by permitting. In India, The Trade Marks Act, 1999 arrangements with assignment also authorizing of trademarks.
To lay it out plainly, in the event of an assignment of a trademark, there is an adjustment in the ownership of the enlisted brand and in the event of permitting, the privilege in the exchange mark keeps on vesting with the first proprietor however just hardly any limited rights to utilize the brand/mark are given to the outsider.
Assignment of a trademark happens when the ownership of such imprint in that capacity, is moved starting with one gathering then onto the next whether alongside or without the altruism of the business. If there should arise an occurrence of an enrolled Trademark, such assignment is required to be recorded in the Register of trademarks.
An imprint might be doled out or moved to another element in any of the accompanying habits:
Benefits of Assignment of Trademark in India
Get your trademark’s value
Brand creation involves a lot of money, time and hard work. With the assignment of Trademark in India, the trademark owner(s) can encash the value of a brand which until now existed only on papers. The combined efforts create more value and the assignor can always put appropriate restrictions.
Assignment Agreement is Valid Proof
In case of any trademark-related dispute, the legal rights of the assignee would easily be established through the trademark assignment agreement. The Registry ensures that all the checks are in place by examining the validity of all the clauses mentioned in the agreement and publishing the assignment in the Trade Marks Journal.
Pre-established brand name
The assignee has the advantage of dealing in an already existing and established a brand name. The time, efforts and investment for creating brand value are saved for the assignee.
Expansion of business
In the case of licensing, the assignor’s business increases as more vendors join to contribute in brand building. The brand value will propel with the combined efforts of assignor and assignee.
TYPES OF Trademark assignment in India
Complete Assignment
All the rights vested in the trademark are assigned to the third party, including the rights to further transfer, to earn royalties, to license, etc.
Assignment limited to only some goods/ services
In this assignment, the transfer of ownership is restricted only to certain products/services as decided in the Trademark Assignment Agreement.
Assignment with Goodwill
In this case, the value and the rights attached to the trademark are also transferred. This makes new owner of the trademark eligible to use the assigned brand name with respect to the products and services already sold under the brand name. Also, it grants permission to use the acquired trademark for any new venture or product the new owner creates or manufactures.
Assignment without Goodwill
Also known as Gross Assignment, here the brand owner restricts the rights of the assignee, limiting user rights of the new assignee and prohibiting him/her from using the brand name for the products already in use by the assignor. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand is not transferred to the buyer.
FAQ
Q. How long the Registry will take to go through the formalities of trademark assignment in India?
The Trademark Registry in India normally takes up to 6 to 8 months to update the data of the transfer. However, where the effective date of transfer is expressly provided in the Trademark Assignment Document i.e. Assignment Deed, the conferred rights are enjoyed by the Transferee from the said date.
Q. What is the Government Fee prescribed for Assignment of Trademark?
A registry has prescribed Rs 9,000/- as a fee payable for application of transfer Trademark ownership i.e. Trademark Assignment in India.
Q.I do not want to transfer the ownership, however want to give rights to use the Trademark to other person. Can I proceed with it?
The owner of the Trademark can provide rights of using the Trademark without transfer of ownership. This is called Partial transfer of Trademark or Licensing of Trademark in India. To affect the said transfer of rights, an Agreement is to be executed by providing all the terms and conditions along with covenants as agreed by the Parties.
Q. What is the procedure of Assignment of Trademark in India?
Q. What is trademark assignment?
Trademark assignment is the transfer of ownership of a trademark from one person or entity to another.
Q. Why is trademark assignment important?
Trademark assignment is important because it ensures that the trademark owner has the legal right to use and protect the trademark.
Q. What is the process for trademark assignment in India?
The process for trademark assignment in India involves executing a trademark assignment deed, which is a legal document that transfers ownership of the trademark from the assignor to the assignee. The deed must be executed in the presence of two witnesses and must be notarized.
Q. Can a trademark assignment be partial?
Yes, a trademark assignment can be partial, meaning that only certain rights associated with the trademark are transferred, rather than the entire trademark.
Q. What is the difference between trademark assignment and trademark licensing?
Trademark assignment involves the transfer of ownership of the trademark, while trademark licensing involves granting permission to another person or entity to use the trademark for a specific purpose.
Q. Do I need to register a trademark assignment in India?
Yes, a trademark assignment must be registered with the Trademark Registry in India. The application for registration of trademark assignment must be filed within six months of the execution of the assignment deed.
Q. What are the fees for registering a trademark assignment in India?
The fees for registering a trademark assignment in India vary depending on the number of trademarks being assigned.
Q. Can a registered trademark be assigned to a foreign entity?
Yes, a registered trademark in India can be assigned to a foreign entity, subject to compliance with Indian laws and regulations.
Q. Can a trademark assignment be challenged in India?
Yes, a trademark assignment can be challenged in India if it is found to be fraudulent or in violation of Indian laws and regulations.
Q. What are the consequences of not registering a trademark assignment in India?
If a trademark assignment is not registered with the Trademark Registry in India, the assignee may not have legal rights to use or protect the trademark, and the assignor may still be liable for any infringement of the trademark.
