Trademark registration gives the owner the exclusive right to use a brand name, logo or slogan for the goods or services it is registered for. In India, trademarks are registered by the Trade Marks Registry (Controller General of Patents, Designs and Trade Marks) under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. A registration is valid for 10 years and can be renewed every 10 years. Trademark assignment, explained below, is the written transfer of a trademark from its current owner (assignor) to a new owner (assignee).
Trademark assignment is a formal written document that acts as the part of the transfer of ownership of a recognized phrase, word, and symbol or design or trademark from one party to another. The Current Owner of that particular trademark is known as "the Assignor", and the future owner is named as "the Assignee".
A trademark is a valuable asset or prized possession as it helps the end-users to link with the same qualities with a known brand quickly. This trademark agreement helps the owner to transfer the goodwill of the trademark properly to another party without facing any problems or hurdles.
A simple Trademark Assignment Agreement will key out the following basic checklist:
As per Section 39 of the Trade Marks Act, 1999, an unregistered trademark can also be assigned or transmitted with or without the goodwill of the business concerned.
As per Section 38 of the Trade Marks Act, 1999, a registered trademark can be assigned fully or partly (for all or some of its goods or services), with or without goodwill, to any person or business. The new owner must then apply to the Registrar in Form TM-P to be recorded as the proprietor (official fee ₹9,000 for e-filing, ₹10,000 for physical filing). The fee for the trademark assignment varies depending on the nature of the assignment.
It is a legally written document that helps in transmitting the ownership of the trademark or service mark when required. A transfer of trademark or ownership comes into the action when a company or product is being sold to another organization or person.
Without a written Trademark Assignment Agreement, it is unclear who owns the trademark. Therefore, the following are the results for not using the agreement:
The transfer of a trademark can be done in different forms. The owner of the trademark can transfer all the rights and power with respect to a trademark to another business in different ways.
The proprietor of a brand XYZ Pvt Ltd sells his mark fully through an official agreement to ABC Pvt Ltd. Once the transferring process is completed, XYZ Pvt Ltd doesn't hold any power or rights on the brand name or trademark. This is known as A Complete Assignment of Transfer of Trademark.
Mr Sundaram, the proprietor of a trademark or brand used for pickles, spices and sauces. He transfers the rights in the brand-related to spicy products to Lalitha but it holds the rights in the trademark or brand related to pickles and sauces. This is known as the Partial Assignment of Trademark.
The power and value of a brand or trademark are related to the product which is also transferred to another entity.
Here the trademark is transferred, but the assignor keeps the goodwill, i.e. the right to continue using the mark for the products it already sells under it. The assignee must apply to the Registrar within six months for directions on advertising the assignment (Section 42).