What is a Trademark?
A trademark is, simply your business name. Trademarks may be involved in just the business name itself, a logo or a “combined mark” that covers both your business name and logo.
What is the Trademark Assignment?
Trademark is an intellectual property and like any other asset, the proprietor of a trademark has the power to sell, license or transfer the owned intellectual property. Such a transfer can be made through Trademark Assignment or through licensing.
When a trademark is assigned, there are some variations in the ownership of the registered brand. But when it’s licensed, the benefits in the trademark continue to vest with the buyer but only a few qualified rights are given to the third party. This assignment can be done with or without assigning the business goodwill. In case of a registered trademark, such an assignment is required to be recorded in the Register of a trademark.
Benefits of a trademark assignment
Through an assignment agreement, the brand owner can unlock the value of the brand owner and can unlock the value of the brand, which, until this point, only has value on paper. The assignee, on the other hand, could be significantly better off beginning a market with a previously well-known brand, rather than developing a new one entirely.
In case of a dispute associated with the trademark, legal rights would quickly be established through the action. The Registrar assures that all the checks are in place by testing the validity of all the clauses in the agreement and declaring the assignment in the Trade Marks Journal.
Requirements/ checklist for assign trademark
Assets to be assigned
- Pending trademark applications.
- Issued trademark registrations.
- Associated marks, applications or registrations.
- International registrations.
- Common law trademarks.
- Names of living or deceased individuals.
- Domain names, email accounts, social media or website accounts, etc.
- Execution date and place.
- Power of attorney.
What is the process for a trademark assignment?
The assignment of a trademark happens when assign or transfer of intellectual property rights to another person with or without goodwill. Assignee, the person who becomes qualified by the assignment of a certified trademark should apply for the trademark assignment in the designated manner.
- An application of a trademark assignment shall be made in Form ™-P by the assignor or assignee or both can make a joint request to register assignee as a subsequent proprietor.
- Apply with the registrar of a trademark within six months from the date of procurement of the proprietorship. The application can be filed later, but the requisite fee may vary accordingly.
- In case of assignment without goodwill or assignment of a certified trademark, the regulation from the registrar of trademarks is needed before the expiry of six months from the date on which assignment is delivered or within the extended long period which is provided by the registrar.
- Advertise the assignment in such a manner and within such a period as the registrar may direct.
- A copy of the direction of the registrar and advertisement of the assignment must be submitted to the office to make sure that the directions have been followed accordingly or not.
- On the receipt of the trademark assignment application and documents required, the registrar after perceiving satisfied shall register the assignee as the proprietor of the trademark and the specifications of the assignment to be recorded in the register.
How to assign a trademark
Assign trademark is the transferring of proprietary rights within the property of the businessman. The way within which assignment is often created square measures as follows:
Complete assignment of logos
In a complete assignment, the owner of the trademark transfers all the rights with the relation to the trademark, together with the transfer of the rights like the right to any authorities, earn royalties, etc., to a distinct entity.
For instance, let’s take” A” as the owner of “XYZ”, sells his whole association through an agreement to B. After this, A doesn’t maintain or get any rights with relation to “XYZ”.
Partial assignment of logos
In a partial assignment, the transfer of possession is restricted to specific or service solely. The owner could maintain and support the right to any transfer, to earn royalties etc.
Moreover, for instance, the owner of a tea and a biscuit whole transfer proprietary rights solely with relation to the tea whole retains the rights over the biscuit whole, this process is known as the partial assignment.
Documents required for trademark assignment in India
- Certificate of Trademark Registration (if any).
- The assignor and assignee’s name and description.
- No Objection Certificate (NOC) from the original owner of the registered trademark.
Documents required for Trademark Registration:
Trademark registration is an inherent mechanism in which a brand can be secured from undesired use and infringement. The Indian government has clarified the trademark registration method. The entrepreneurs can now quickly obtain trademark registration for their brands within a few months. Here, for the application process, there is no need for submitting original documents. A Scanned copy of the original document is enough for the application process.
Individuals and sole proprietorship
In India, any individual can easily register a trademark. There is no provision for forming a legal entity or business entity to register a trademark. Additionally, the documents required to register a trademark in the name of a proprietorship are the same as that of an individual as follows:
- Copy of the logo, preferably in black & white in enough. In case the logo is not provided, the trademark application can be registered for the word.
- The signed Form-48. It is an authorization and support from the applicant to a Trademark Attorney for registering and filing the trademark application on his/her behalf.
- Identity proof of the individual or proprietor.
- Address proof of the individual or proprietor.
Trademark Assignment with Goodwill
This plan encourages and supports the exchange of both proprietorship rights and the picture esteem combined with a trademark in an appropriate field of business. After such a task sequence of action, the preferred one is empowered to utilize the market reputation of the trademark for understanding and developing some other results of worry in the future, notwithstanding the item sold by the assignor.
Trademark Assignment without Goodwill
Under this design, the assignor or seller of possession or property rights defines the appointee or customer from utilizing the said trademark in the matter of the assignor’s items. This indicates a comparable trademark is utilized by both the assignor and the trust after such a course of action, for working collectively in different fields. This kind of trademark task is called the gross trademark task.
FAQs on Trademark Assignment
What is the trademark sale?
The selling of a trademark involves two parties. The assignor and the assignee. Trademarks are of great advantage to any business and determine the sales to a notable level. It reflects your products or services and presents an edge over others in the market. At times, the owner can transfer or assign his/her trademark to another person. Selling a trademark also known as the assigning of a trademark from your name to any other person.
Can an unregistered trademark be assigned?
An unregistered trademark can be consigned without the goodwill of the business under the following circumstances:
- At the time of the assignment, it is used in the same business as a registered trademark;
- That both the certified and unregistered trademarks are assigned at the identical time and to the same person;
- and That the goods regarding which the assignment is effected are the same for both the registered and unregistered marks.
Does a trademark assignment need to be notarized?
Typically, only the party indicating the intellectual property must approve the assignment, and while notarization is substantially considered is not strictly required. Once the assignment has been executed, it should be recorded.
Can you assign goodwill?
Goodwill is one of the hardest-to-value assets of a business. An assignment of goodwill in business is also a situation where a deed is considered most appropriate to evidence that such a valuable transfer of property from the seller to the buyer was indeed fully intended.