Overview of Trademark Assignment
A Trademark Assignment is a written document that authorizes a registered proprietor of a trademark to assign the trademark and to give potent receipts for any consideration for such assignment. The assignor transfers a registered word, phrase, and symbol or design to another owner. Trademark Assignment takes place when there is a transfer of the owner’s power, title, and interest concerning the trademark.
In short, Assignment and Transmission of Trademark is a process in which ownership of the trademark is passed from one person to another with full or partial rights depending on the terms and conditions of the owner of the trademark. Registered and Unregistered Trademarks are assigned and transmitted from one person to another with or without the goodwill of the business concerned. A person can assign the trademark through a trademark assignment agreement.
There are various ways of assigning the trademark-
- Complete Assignment
It means that the transfer of all rights together with rights to royalties, rights to further transfer, etc from one individual to the other.
- Partial Assignment
It means that the transfer of ownership restricted or specified to certain products or services.
- Assignment with Goodwill
It means to transfer &amo; assignment of the trademark is done along with all the rights & values associated with the trademark from one person to the other.
- Assignment without Goodwill
It means that the transfer of trademark by the owner in such a manner it can be utilized for any other purpose except the original one.
Here, the Current Owner or transferring party is known as the "the Assignor", and the future owner and the receiving party is known as "the Assignee".
Note- An Unregistered trademark may be assigned with or without the goodwill of the respective business.
What are the Benefits of Trademark Assignment?
Designing and marketing the trademark can be very draining for the company’s fund. So, the business decides to assign the trademark and legalize the intellectual property.There are various benefits of Trademark assignment, which are mentioned below-
- Monetization of Brand
Monetize the value of your trademark and enjoy the fruits of the time & investments done for creating the brand.
- Easy Brand Building
The assignee is also benefitted as he/she would not have to work on brand building.
- Maintenance of IPR
Trademark assignment helps in the maintenance of the intellectual property in terms of maintaining registrations of the same.
- Owner gets the Value of the Trademark
Brand creation, which requires a lot of investment, time, and also hard work. Thus, the Trademark assignment helps the author of the Trademark in getting the cash value of the Trademark.
- Acts as a Valid Proof
Trademark assignment can act as valid proof in case of any dispute relating to the assignment of trademark arose. The legal rights of the registered trademark owner are well protected through such agreements.
- Owner Enjoys Various Benefits
The owner of a trademark enjoys the various benefit of dealing in an already existing trademark.
- Expansion of Business
Trademark assignment helps in the expansion of the business in similar market of the industry.
What Documents are required for the Trademark Assignment?
Below mentioned documents are required for Trademark assignment, which are as follows:-
- Certificate of Trademark registration.
- Particulars (Identity and address proof) of the assignor and assignee.
- NOC from the original owner of the registered trademark.
- Description of trademark assignment with or without goodwill.
- Copy of advertisement along with a Registrar’s direction.
- Signatories and Witness.
- Proof of Execution date and place.
- Power of Attorney
What are the Restrictions on Assignment of a Trademark?
Certain restrictions are required to be kept in mind while applying for Trademark Assignment, which are as follows:-
- Restriction on an assignment where multiple exclusive rights would be created.
- Restriction on an assignment where exclusive rights would be created in different parts of India.
What is the Procedure for the Trademark Assignment?
- Step-1- Make an application
The very first step is to make an application for the Trademark assignment either by the assignee or the assignor or both of them.
- Step-2-Submission of Requisite Forms and the Document
The applicant shall specify all the details (original copy of duly certified documents) of the transfer and be made under form TM-P.
- Step-3- Applying the Registrar
Once the application is submitted, file the same with the Registrar of the trademark within 3 months of acquisition of proprietorship. It will specifically go for two important steps, which are:-
1. Notify the applicant regarding the assignment. or
2. Call to provide proof if he has some doubts/error.
- Step-4-Direction from the Registrar
When there is a trademark assignment with goodwill, the direction from the Registrar of a trademark is mandatory before the expiry of 3 months. However, it can be extended.
- Step-5- Advertisement
The applicant has to make the advertisement as specified by the registrar. Moreover, the copy of the advertisement along with a copy of the Registrar’s direction should also be submitted.
- Step-6-Transfer of ownership
Once the Registrar is satisfied with all the requisite documentation, he shall officially transfer the trademark from the assignor to the assignee.
Note-The name of the Assignee is to be registered as a new proprietor in the register.The assignee can then use the trademark as per the terms of the Trademark assignment agreement.
What are the Penalties for Non-Compliance with a Trademark Registration?
If an individual for any reason falsely represents an unregistered trademark as registered related to any products or services; then the person by law is punishable with imprisonment for a term which may extend to 3 years or with fine, or both.
What you know about Trademark Assignments of Unregistered/Registered Trademark?
- Assignment of the Unregistered Trademark
Section 39 stipulates that an unregistered trademark could also be assigned with or without the goodwill of the business involved.
- Assignment of the Registered Trademark
The registered trademark can fully or partly assign with or without the goodwill of the business to another entity.
What are the Consequences of not using the Trademark Agreement?
Without the Trademark Assignment, there will be a dusky vision on the record who currently owns the mark. Hence, the following are the consequences of not using the agreement-
Loss of Time
Loss of Money
Any other business can use your mark without paying you
Loss of Image
Business goodwill gets affected along with creating confusion in the eye of customers regarding the product
What Aspects should get covered under the Trademark Assignment Agreement?
The Trademark Assignment Agreement should cover the requisite information, which is as follows:-
- Who is the owner of the trademark and who is going to be the new owner?
- What the trademark consists of and any related association with the registration.
- Where the disputes will be handled, if in case any chaos arises.
- Why the trademark owner has the right to assign the mark and associated goodwill?
- When is the trademark transferred to the new owner officially?
- How much will the assignee pay to the assignor?
Arvisa Procedure for Trademark Assignment
Kindly utilize the steps given above to integrate legally and securely a Trademark Assignment and get the benefits in the form of better-quality sale leads and satisfied clients. Our Arvisa experts will be at your disposal for assisting you with guidance concerning Trademark Assignment and its compliance for the smooth functioning of your business in India. Arvisa professionals will assist you in planning seamlessly at the least cost, confirming the successful conclusion of the process.
It is advisable that an attorney with “IPR experience” must be appointed to overwhelm many of the potential pitfalls that creep around within Trademark Assignment and to understand the requirement in detail. The elementary information would be mandatory from your end to start the process. The Attorney will begin working on your request once all the information is provided, and the payment is received.
Arvisa is one of the platforms which coordinate to fulfils all your legal and financial requirements and connect you to consistent professionals. Yes, our clients are pleased with our legal service! Because of our focus on simplifying legal requirements, they have consistently regarded us highly and providing regular updates.
Our clients can also track at all times the progress on our platform. If you have any questions about the Trademark Assignment process, our experienced representatives are just a phone call away. Arvisa will ensure that your communication with professionals is charming and seamless.
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- Provide Documents to Arvisa Expert
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Frequently Asked Questions
- Effective Date
- Notary Public
An unregistered trademark assignment can be done with or without the goodwill of the business concerned. For the same, a request has to be made on Form TM-16 for an unregistered trademark to be assigned.
- Assignment of Intellectual Property Rights Agreement
- Assignment and Transfer Agreement
- Intellectual Property Assignment
- Transfer of Trademark Rights
- Trademark Purchase and Trademark Assignment Agreement
Yes, an individual can assign a registered trademark.
It is a lawful means that helps in assigning ownership or a trademark or service mark when needed. A Trademark assignment comes into the role when a product or company is being sold or purchased by another person or company.
The party assigning the trademark must sign the assignment, and while notarization is strongly put forward it is not strictly required. Once an assignment has been executed, it should be recorded.
A person can start by searching for government-registered trademarks. For the same person, you can use the trademark database on USPTO's website free of cost.
Yes, a person can buy someone else’s trademark through a Trademark assignment.
A registered trademark owner who believes its trademark is being infringed may file a civil suit in either High Court or Supreme Court. However, in general, the trademark owners choose to sue for infringement in federal court.
Trademarks can be used to make you more money with very little effort. As it does not cost much a person to create and can be turned into a money-making machine with a small investment.