Trademark Assignment

Trademark Assignment

According to the Trade Mark Act 1999, which define trademark as a sign, symbol, word, cluster of words registered for the legal use and representation of the company’s products and services. The owner has the right to sell, license or even transfer his rights with respect to his trademark which can be done either by the way of assignment or by licensing in India.

The company has the legal power and right to take action against any illegal use and changes made in his trademark either done by any other individual or company it does not belong to. The existence of the company is complete after its trademark is registered.

As mentioned above owner has the complete right to sell, transfer his trademark to anyone by following the legal procedure, when there will be change in the ownership of the registered trademark it is known as trademark assignment. In case of trademark licensing ownership doesn’t change but the third party can use the trademark with certain restrictions.

Assignment of the trademark starts as soon as the right is transferred from one party to other either with or without goodwill of the company. These are certain ways to assign the trademark to the other party:

Complete Assignment: When the owner transfers his trademark along with all the rights intact such as rights to earn royalties and transfer to another entity.

Partial Assignment: When the transfer is restricted to certain services and products only and owner still have the right to further transfer the trademark to earn more royalties.

Assignment along with goodwill: When the owner transfers the associated rights and royalties to the third party while selling the products and services.

Assignment without goodwill: These assignments are known as gross assignment in which the owner restricts the new owner to use the trademark for the products he uses it for which simply means that goodwill associated with the product or service sold by the owner is not transferred to the new owner.

Whenever there is a case of transfer or assignment should be recorded with the registrar of trademarks.

2 Best Ways to Record Trademark Assignments are:

• For unregistered trademark assignment Form TM-16 must be filled and requested to be assigned or transferred.
• For registered trademark assignment Form TM -23 or Form TM-24 must be filled and requested for any transfer or assignments.

Advantages of Trademark Assignment:

• Brand Marketing: It will definitely help in saving the extra effort when it comes to marketing strategy; a well-known trademark needs less marketing expenses.
• Time and effort saving: It saves a lot of time and efforts as new trademark registration is more time consuming than trademark assignment.
• No other proof needed: According to the law, trademark assignment needs to be recorded with the registrar hence works as a proof.

Document Required

Documents Required for Trademark Assignments:

• Deed of Assignment
• Assignor’s Affidavit
• Assignor’s ID Proof