How to Transfer Trademark rights in India?

Last Updated On: Aug. 20, 2021, 10:06 p.m.
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How to Transfer Trademark Rights in India?

 

Every owner of a trademark owner who wishes to transfer his/her right with regard to its trademark can do so either by trademark licensing or trademark assignment which is governed under the Trademark Act, 1999.

 

What is Trademark Assignment?

 Trademark assignment is a process through which ownership and rights of the trademark are transferred to any other person. A Trademark assignment takes place between the parties only after executing an agreement called Trademark Assignment Agreement. Moreover, the partial assignment of a trademark is known as trademark licensing.

 

What are the kinds of Assignment?

Complete Assignment

In such type of assignment, complete rights are transferred to the second party in relation to the registered trademark. The owner of the trademark in this case transfers all the rights to the other person to earn royalties out of it. The owner of the trademark will not retain any right on the trademark, once he transfers the trademark through an agreement to the second party.

For eg: Mohan, owner of “XYZ”, sells his whole association through an agreement to Rohan. Post this transfer, Mohan will not retain any rights in relation to “XYZ”.

Partial Assignment

the ownership of the trademark is transferred only in regard to certain products/services as pre-decided by both the parties through the Trademark Assignment Agreement. In this case, the owner of the trademark can retain a few of the rights and restrict the transfer of trademark to specific products and services only.

For eg: Mohan, the owner of bread and butter as a whole, transfers proprietary rights solely in relation to the bread and retains the rights over the butter. This transfer is known as a Partial Assignment

Assignment with Goodwill

In this category of trademark assignment, the owner of the trademark transfers the rights of trademark in addition to the value of the trademark associated with it. When the assignment with goodwill takes place, then the rights and value of the trademark are given to the second party to use the proposed mark in relation to the products and services.

For eg: if the owner of a brand “Amul” which deals with dairy products sells his brand to “X”, then “X” will be able to use such brand with respect to its dairy products and other products which it manufactures.

Assignment without goodwill

The category of “Assignment without goodwill” is also known as Gross Assignment. In this case, the owner of the brand, while transferring the trademark, restricts the right of the buyer to use such a brand for the product which is already being used by the original owner.  Hence, any goodwill attached to such a brand with respect to the product already being sold under such a brand is not transferred to the buyer.

For eg: if the owner of the trademark “SAMSUNG” uses it for producing and marketing of Mobile phones and decides to assign it to another party without any goodwill, then another party can use the trademark for the products apart from the mobile phones.

 

Benefits of Trademark Assignment:

Expansion of Business

Assignment of trademark helps in business expansion as both the assignor and assignee get the right to collaborate the brand with their respective businesses

Pre-established brand

You don’t need to invest in time, money or labour in creating and marketing of your brand if you got the right on an already established well known brand through the process of trademark assignment. Assignee do not require to create a new brand and take the pain in getting it registered.

 

Restrictions on transfer of trademark

  • While the process of trademark assignment is fairly procedural, the Registrar may refuse to register a trademark assignment in some cases. 
  • In the case of the registered Trademarks, the Trade Mark Act 1999 puts certain restrictions. It is on the assignment of a registered trademark where there exist possibilities of creating confusion or interfere with another trademark.
  • The restrictions on the assignment that results in the creation of an exclusive right in more than one person for the same goods or services. Thus, the Registrar may disallow an assignment which would give rights over a trademark. This is to multiple parties for the same description of goods or services or those associated with each other. 

 

Procedure of Trademark Assignment in India

To apply for trademark assignment, follow the below step by step process:

1. Application for Trademark Assignment

First of all, an application for a trademark assignment must be made by the Assignor or Assignee or by both. Both of them can also jointly make a request.

2. Filing of TM-P form

In the next step, it is necessary to file the TM-P form by furnishing all the required details of the transfer

3. Submission of Documents

After filing up TM-P form, you need to submit all the necessary documents required for Trademark assignment to the Registrar of the Trademark within 6 months from the date of acquisition of proprietorship.

4. Processing of the application

Once the application of assignment is successfully submitted along with the necessary documents, the application will be processed.

5. Advertisement of the Assignment

As soon as your application is specified, applicant have to make an advertisement for the assignment in such manner as directed by Registrar. Also, submit the copy of the direction of Registrar and advertisement of the assignment in the office of Registrar.

6. Approval of the Assignment

On receiving of the trademark assignment application along with the documents, Registrar will verify the application and after proper verification, if Registrar satisfies, then he will approve the application. However, Registrar will register the assignee as the proprietor of the trademark. The Registrar will enter the details of the assignment in the register.

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