Trademark Assignment

Pre-Requisites for Trademark Assignment

• The assignment of the trademark must be made in writing.
• The trademark owner (the assignor) and the trademark buyer (the assignee) should be the two parties with whom the assignment is made.
• The trademark assignor must consent to the assignment and must have the necessary purpose.
• The trademark assignment should be made for a fair and sufficient sum of money.

Assignment of Trademarks Agreement

The owner of a trademark frequently assigns it to the assignee through a properly written trademark assignment agreement. The following considerations should be taken while drafting the trademark assignment agreement:

• The rights to the trademark shall not be negatively affected by the obligations mentioned in the agreement.
• The choice and necessity of whether the business's goodwill is included in the assignment or not must be made plainly known.
• The agreement should be clear about the purpose of the transaction or transfer.
• The geographical region in which the assignee owns ownership and rights to the trademark is required to be specified.
• It is important to be aware that the right to sue for current and past offenses and submit claims for damages has been transferred.
• The contract must be properly performed, which means it must be notarized and stamped in accordance with the relevant Stamp Act.
• It is necessary to specify the witnesses and signatures.
• The place and time of the agreement's execution must be specified.
• The assignment's day and date, as well as the persons involved, must be noted.
• If the legal heirs of the assignor and assignee are bound by the terms of the agreement, it should be made clear in the agreement.

What Advantages Do Trademark Assignments Offer?

For the company's budget, designing and promoting the trademark may be highly expensive. The company decides to legalize its intellectual property and assign its trademark as a result. The following are some benefits of assigning a trademark:

Brand Monetization

Profit from your trademark's worth and enjoy the outcomes of the time and work you put into creating your brand.

Building a Brand Easily

The assignee benefits as well because brand creation is not something they have to do.

IPR Maintenance

A trademark assignment aids in the preservation of intellectual property by ensuring that the property's registrations remain active.

Owner receives the Trademark's Value

Owner receives the value of the trademarked brand that took a lot of money, effort, and time to develop. Because of this, the trademark assignment helps the trademark's author determine how much money the trademark is worth.

Serves as a reliable proof

The trademark assignment can be utilized as reliable evidence in the event that there is ever a dispute over the assignment of a trademark. Such agreements successfully safeguard the registered trademark owner's legal rights.

Owner Receives a Variety of Benefits

The many advantages of using an already established brand are enjoyed by the trademark owner.

Growth of the Business

Assignment of a trademark aids in business development into related industries' markets.

What paperwork is needed for the assignment of a trademark?

The following papers, which are listed below, are necessary for trademark assignment:

• Registration certificate for a trademark.
• Particulars (proof of the names and addresses of the assignor and assignee).
• NOC from the trademark's first registered owner.
• Description of a goodwill-based trademark transfer.
• Registrar's instructions and a copy of the advertising.
• Witnesses and signatories.
• Notarization.
• Date and location of execution evidence.
• Authority of Attorney.

What limitations apply to the assignment of a trademark?

When submitting a request for a trademark assignment, the following constraints must be taken into consideration:

• Restriction on an assignment that would result in the creation of several exclusive rights.
• Restriction on a project that would give rise to exclusive rights across India.

What is the Trademark Assignment Process?

Step 1: Submit an application.

The assignee, assignor, or both must submit an application for the trademark assignment as the initial stage.

Step 2: Submit the Document and the Required Forms

The applicant must complete Form TM-P and provide all relevant information (original copies of officially attested papers).

Step 3: Applying to the Registrar

In immediately after submitting the application, you must file it with the trademark registrar within three months after acquiring ownership. It will focus primarily on these two crucial actions:

1. Inform the candidate of the task. Or
2. Call to offer evidence if he has any reservations or mistakes.

Step 4: Registrar's Instructions

When a trademark transfer with goodwill occurs, the trademark registrar's approval must be obtained prior to the 3-month deadline. It can, however, be prolonged.

Step 5: Publicity

The registrar will provide the applicant with instructions on how to publish the notice. Additionally, a copy of the advertising and the Registrar's instruction should be supplied.

Step 6: Transfer of ownership is

When the Registrar is satisfied that the necessary paperwork has been submitted, he will formally transfer ownership of the trademark from the assignor to the assignee.

Restrictions on Trademark Assignment

The following limits on trademark assignment are set forth in the Trademarks Act of 1999:

Separate Use Limitation

When the assignment creates exclusive rights in various people in connection to the same or comparable goods or services and is likely to mislead or cause confusion, the assignor cannot assign a trademark. Thus, it is prohibited for one individual to hold several exclusive rights to the same or similar goods or services. It prohibits the concurrent use of a trademark by several parties in connection with the same or comparable goods or services.

Restriction on Multiple Territorial Uses

When a trademark assignment leads in the development of an exclusive right for several individuals in different regions of India in relation to the same or comparable goods or services, The trademark cannot be transferred by the assignor. When an assignment leads in the development of an exclusive right for multiple individuals in various locations within India with regard to same or comparable goods or services sold or provided outside of India, the assignor is not permitted to assign the trademark. As a result, it is prohibited to grant rights to same or comparable goods or services in various areas of India.