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Assignment of Trademark
Updated on : Feb 22nd, 2022
Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.
The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.
Who can Assign a Trademark?
Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.
Kinds of Trademark Assignment
The different kinds of trademark assignments are as follows:
The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc.
For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.
The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.
For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand ‘ABC’ with respect to sauces.
Assignment with Goodwill of Business
The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor.
For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.
Assignment without the Goodwill of Business
The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.
For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.
Pre-Requisites for Assignment of Trademark
- The trademark assignment should be in writing.
- The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
- The assignor should have the intent and must consent for the trademark assignment.
- The trademark assignment should be for a proper and adequate consideration (amount).
Trademark Assignment Agreement
The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:
- The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
- The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
- The agreement should show a clear purpose of the transaction/assignment.
- The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
- The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
- The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
- The signatures and witnesses must be mentioned.
- The place and date of agreement execution must be mentioned.
- The date and day of the assignment along with the parties to the assignment must be mentioned.
- The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.
Process of Assignment of Trademark
The process of assignment of the trademark in India are as follows:
- The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
- The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
- Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
- The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
- The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
- Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.
Documents Required for Assignment of Trademark
The following documents must be submitted to the registrar of trademark along with form TM-P:
- Trademark assignment agreement.
- Trademark certificate.
- NOC from the assignor.
- Identification documents of the assignor and assignee.
Restrictions on Assignment of Trademark
The Trademarks Act, 1999 provides the following restrictions on trademark assignment:
Parallel Use Restriction
The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.
Multiple Territorial Use Restriction
The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.
Benefits of Trademark Assignment
- The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
- The assignee obtains the rights of an already established brand due to trademark assignment.
- The trademark assignment supports the assignor and the assignee to expand their respective businesses.
- The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.
Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.
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Assignment of Trademarks in India
Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. In other words, it is transferring of proprietary rights in the property of the proprietor. The manner in which an assignment can be made are as follows:
Complete assignment of trademarks
In a complete assignment, the owner of the trademark transfers all the rights with respect to the trademark, including the transfer of the rights such as right to further transfer, earn royalties, etc., to another entity.
For example, A, owner of “xyz”, sells his brand to another through an agreement to B. After this, A does not retain any rights with respect to “xyz”.
Partial assignment of trademarks
In a partial assignment, the transfer of ownership is restricted to specific product or service only. The owner may retain the right to further transfer, to earn royalties etc.
For example, A, owner of a tea and a biscuit brand, transfers proprietary rights only with respect to the tea brand and retains the rights over the biscuit brand, this is said to be a partial assignment.
Assignment with goodwill;
This is an assignment where the owner transfers the rights and value of the trademark as associated with the product it sells;
For example, A, owner of “TH” trademark for manufacturing and selling of watches, can assign the trademark along with giving the assignee the right to use the said trademark for the same product.
Assignment without goodwill
This is an assignment where the owner restricts the assignee to use trademark for the products he uses it for. That is, the goodwill attached to the owner’s brand with respect to the product already being sold under such brand, is not transferred to the buyer. This means that assignor & assignee both can use the same trademark but in dissimilar goods or services.
For example, if the owner of the trademark “TH” uses it for manufacturing and selling of watches and decides to assign it without goodwill, it means that the assignee can use the trademark “TH” for any other product other than watches.
Once a trademark is assigned it is important to record the change in ownership with the Trademark Registry. Specific forms with fees have to filed to ensure that the records reflect the ownership details.
Procedure to record the assignment of trademark with the Registry:
Assignment of an unregistered mark:.
Section 39 stipulates that an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.
Assignment of a registered trademark:
Section 38 stipulates that trade Marks can be either assigned in full or transmitted in part, with or without the goodwill of the business. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. (Rule 68 of the Trademarks rule, 2002).
In a case of assignment or transfer of a single trade mark:
- if made within six months from the date of acquisition of proprietorship, then the official fee is Rs. 5000;
- if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs. 7,500;
- if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs. 10,000.
In case of assignment of more than one trademark:
- if made within six months from the date of acquisition of proprietorship, then the official fee is Rs.5000 for the first mark and Rs.1000 for every additional mark;
- if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs.7,500 for the first mark and Rs.1500 for every additional mark;
- if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs.10,000 for the first mark and Rs.2000 for every additional mark.
From a practical perspective , this is what you need to incorporate in any assignment deed which involves trademarks;
1. The assignment deed must be in writing where the assignor’s name must be same as it is in the Register of Trademarks, i.e. the owner of the trademark;
2. It is absolutely necessary that the territorial extent of the assignment is clearly laid down; for example, if the assignee is based in India, then it is a must that the assignment deed contain a clause saying the assignment is for that particular region;
3. The next obvious thing is, the mark/marks that the proprietor wants to assign must be mentioned clearly;
4. The consideration that the assignee needs to pay should be mentioned as well; the standard phrase of “good and valuable consideration” wouldn’t hold good; The stamp duty has to be calculated on the basis of the consideration.
5. The effective date of the assignment must be laid down clearly;
6. The most important part of an assignment deed is to mention if the assignment is along with the goodwill or not.
As can be noted, transfer of proprietary rights in trademark is similar to transfer of any other asset; Trademarks are valuable assets since they quantify a company’s reputation and goodwill. While making sure the assignment is in order you also have to keep the records of the trademark registry updated with these changes.
This article has been authored by Durga Bhatt , an IP Law practitioner.
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Trade Mark Assignment Agreement
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A Trade Mark Assignment Agreement ("Assignment Agreement") is a legal document under which the Trade Mark owner, known as the "Assignor," assigns another person or entity to own such rights, known as the "Assignee", in exchange for an agreed payment, known as a "Consideration".
Trade Mark is a word or symbol representing a company or product. A Trade Mark can be one that is registered under the Trade Marks Act, 1999 or one that is established by continuous and prolonged use of such a word or symbol in relation to a particular company or product. For example, APPLE, GOOGLE, TATA, etc.
As per the Trade Mark Act, 1999, the Assignment of Trade Mark has to be done by execution of the assignment deed in writing. Both the registered and unregistered Trade Mark under the Act can be assigned to a third party.
An assignment Agreement is different from a License Agreement , under an Assignment Agreement, the Assignor gives away all the rights over the Trade Mark for a fixed amount or consideration and will not be entitled to use such Trade Mark or receive regular Royalty payments on it. On other hand, under the License Agreement , the owner of the Trade Mark grants permission to another person to utilize the Trade Mark in a particular manner for a limited period of time.
The Assignment Agreement can be of two types:
- Assignment with goodwill: The Assignor transfer absolute rights and values associated with the Trade Mark to the Assignee. After entering into this Agreement, the Assignor will not be able to use any goods or services related to the Trade Mark. For example, ABC Ltd owns a Trade Mark with the wordmark "GREENGO" registered under classes 35 and 42. Under this arrangement, ABC assigns all its rights over the Trade Mark "GREENGO" in relation to Classes 35 and 42 along with any other classes registered in the future.
- Assignment without goodwill: Under this, the Trade Mark related to particular goods or services will be assigned to the Assignee and the Assignor will retain the right to use and assign the goods or services which are not assigned to the Assignee under this Agreement. For example, XYZ Ltd owes a Trade Mark with the wordmark "ORANGE TECH" registered under classes 30 and 39. Under this arrangement, XYZ assigns the Trade Mark to the assignee only in relation to class 30 and retains the rights over class 39 and any future classes under the same name.
Restrictions on assignment of Trade Mark:
- Restriction on assignment or transmission where multiple exclusive rights would be created . Thus, the same or similar goods or services cannot be assigned to different entities or people. If different Trade Marks are assigned, such assignments should not cause any confusion among the users of such goods or services.
- Restriction on assignment or transmission when exclusive rights would be created in different parts of India. Thus, the Trade Mark cannot be assigned to different people on a geographical basis within the boundaries of India.
How to use this document?
This Agreement covers the following major provisions:
- Parties: The type and details of the parties i.e. Assignor and Assignee are included under this Agreement. The Parties can be an individual, company, partnership, LLP and so on.
- Description of Trade Mark: the details about the Trade Mark can be mentioned under this Agreement. If required, a detailed description can be mentioned under Schedule-A to the Agreement.
- Assignment of Trade Mark : defines the assignment of Trade Mark and denotes whether the Trade Mark is assigned with or without the goodwill.
- Consideration: It includes the method of calculation of consideration payable by the Assignee, how it will be paid to the Assignor and who will bear the cost of GST (Goods and Services Tax) payable on such transaction. This clause also includes the penalty for any late payment of Consideration by the Assignee.
- Warranties: The warranties or promises by both the Assignor and Assignee regarding their capacity to enter into this Agreement, ownership over the Trade Mark, compliance with the terms of this Agreement and laws are included. If required, such additional warranties can be mentioned under this clause.
- Confidentiality: Under this, both parties agree not to disclose confidential information including trade secrets, know-how, plans and so on to any third parties. If required, a separate detailed non-disclosure agreement can be signed between the parties.
Once the details are filled in, this Agreement can be printed on non-judicial stamp paper of value prescribed by the concerned state where this Agreement is executed. The Agreement has to be signed by two independent witnesses who are not a party to this Agreement and must be notarized by a notary located in the place where this Agreement has been executed.
Once the Agreement is executed and notarized, it needs to be registered with the Registrar of Trade Mark within six months.
Assignment of the Trade Mark is covered under the Trade Marks Act, 1999. Only those assignment agreements registered with the Registrar will have protection under this Act.
An Assignment Agreement is a contract and general principles of the Indian Contract Act, 1872 will be applicable.
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Other names for the document: Trademark Assignment Agreement, Assignment of Trade Mark Agreement, Agreement to sell a trade mark, Assignment of goods trade mark, Assignment of service trade mark
Intellectual Property and New Technologies - Other downloadable templates of legal documents
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Complete Process of Trademark Assignment in India
In recent years, trademark registration in India has seen a huge boom. During the past 4 years, the number of trademarks registered in India were equal to the past 75 years. Until 2015, India had approximately 11.9 lakh trademarks. While in 2020, registered trademark in India jumped to a humungous 23.52 lakh trademarks, am enormous addition of 11.61 lakhs.
As trademark registrations are rising, trademark transfers/assignments are also on a steady rise. Today, this article will explain the complete process of how to change the owner of a trademark. So, keep reading to understand the trademark transfer process step by step
Do you own a business but not have a trademark? This is what you are missing out on: Take your business to new heights with a trademark
Before understanding the trademark transfer process, let us see what is a trademark?
What is a trademark?
A trademark is a form of intellectual property that provides the trademark complete right to use the registered trademark. Just like physical property, the trademark is also the property of its owner. Out of the whole bunch of rights that a trademark offers, an important one is the right to transfer the trademark. Every trademark owner has the right to transfer their trademark by trademark licensing or trademark assignment. The Trademark Act, 1999 regulated the process of trademark registration, trademark licensing, and trademark transfer in India.
What is Trademark Assignment or Trademark Transfer?
Trademark assignment means the process by which transfer of ownership and rights of a trademark takes place. According to Section 37 of the Trademark Act, 1999, “the trademark transfer is defined as the transfer of an owner’s right, title, and interest in a trademark or brand mark.
Are you planning to file for a trademark with USPTO ? Read How to avoid rejection of trademark registration
Types of Trademark Assignment
Here are four ways to transfer a trademark:
After the trademark allotment, it is necessary to record the transfer of possession in the Trademark registration .
Are you confused about which class your trademark falls in? Learn A to Z of Trademark Classes Here
How do I change the owner of a trademark?
Trademark assignment can take place only after the execution of an agreement known as a Trademark Assignment Agreement . If a partial assignment of a trademark takes place, then the process is known as trademark licensing. If a trademark is registered, then it can be assigned by following the due process:
- First of all, an application for trademark Assignment needs to be made at the Trademark office. Either or both of the Assignor or Assignee can file the trademark transfer application.
- Then submit a TM-P along with the requisite details (Brand Name, Application Number, Class Number Current Status (Active or not), and fee.
- After TM-P form filling, the next step is to submit the documents necessary for the Trademark assignment to the Registrar of the Trademark. Also, the maximum time limit for submission of documents is 6 months starting from the date of acquisition of proprietorship.
- In the next step, the application undergoes processing at the Registrar’s office.
- Next up, the applicant needs to advertise the assignment as suggested by the Registrar. Moreover, you need to submit a copy of the Registrar’s direction along with the assignment advertisement.
- Now, the Registrar approves the assignment application only after he is sure after proper checking. Thereafter, the registrar will register the assignee as the trademark and submit the details of the assignment in the records.
How to Prepare an Assignment Agreement or Application
Under the Trademarks Act, an assignment of a trademark is possible only after an agreement in writing between the parties concerned. Hence, the assignor, as well as the assignee of the trademark, needs to execute a legal document for trademark transfer. Here are some tips for assignment agreement:
- Mentioning requisite details such as brand name, application number, class number, and the current status is mandatory.
- Delineating legal titles: The agreement’s operative part of the agreement should state that the person transferring the trademark is the lawful owner of it with the right to transfer. Moreover, the agreement should mention that the assignor (himself or his power of attorney holder) has complete right, absolute power, as well as lawful authority to sell or transfer the trademark.
- Consideration: The consideration portion includes the amount paid by the assignee to the assignor for the transfer. This is because the payment receipt establishes that trademark rights, title and interests have an allowance.
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MEANING OF TRADEMARK ASSIGNMENT?
Like any other asset, the trademark can also be transferred to another person for commercial purposes. The process of assigning the trademark’s ownership title either partially or fully to a person on consideration is known as an assignment of the trademark. A contract will be created in the form of the deed by the assignor and assignee for the purpose of conducting Trademark Assignment and the assignee must apply to the registrar of trademarks within 6 months from the date of assignment.
eStartIndia provides best professionals who would help you in drafting an effective trademark assignment agreement or applying to the registrar for licensing that would broaden the scope of your business interests. We offer assistance to various services like trademark registration, trademark objection, trademark assignment , trademark renewal , trademark opposition, and trademark rectification.
eStartIndia will help you with all Trademark registration and other connected services from the comfort of your home by offering you services that are specialized and tailored as per your requirement.
Get a free Consultation for Trademark assignment with Our Top Rated Experts with a simple registration.
TYPES OF TRADEMARK ASSIGNMENTS
COMPLETE ASSIGNMENT : Under this assignment, the complete ownership of the trademark will be transferred to the assignee and no further rights of ownership shall vest with the assignor.
SPECIFIC ASSIGNMENT : When only special rights to use the trademark is made available in the agreement then such assignment is known as a specific assignment.
ASSIGNMENT WITH GOODWILL : The transfer of the rights will also include the transfer of goodwill. The computation of the goodwill amount will be done separately in the agreement.
- ASSIGNMENT WITHOUT GOODWILL : Sometimes only the ownership or rights alone will be transferred and the goodwill remains with the assignor. They are also known as gross agreement.
ADVANTAGES OF ASSIGNMENT
- USE WELL KNOWN BRAND NAME : The assignee will have the advantage of entering a market with an already existing and established brand name that negates the risk of being a fresher in the market.
- ADDS VALUE : The assignee can add value to its products by acquiring a well-known brand name through the process of assignment.
- ACTS AS EVIDENCE : An agreement made is always a valid proof when a dispute arises. Therefore assignment helps in reducing risks of fraud.
- IDENTITY PROOF OF BOTH PARTIES ( passport, driver’s license, voters ID, Aadhaar card or ration card)
- COPY OF ASSIGNMENT AGREEMENT
- PAYMENT OF FEE
PROCEDURE FOR ASSIGNMENT OF TRADEMARK
- The parties must identify the type of assignment they wish to have, either with or without goodwill.
- With the help of a professional, they must draft an agreement expressing their terms and conditions.
- An application has to be made to registrar using TM-P form and other documents within 6 months from the date of formation of the agreement.
- The registrar shall advertise the application
- A copy of the direction of the registrar and advertisement of the assignment has to be submitted before the office of Trademark Registry to ensure that the directions have been followed accordingly or not.
- The registrar after scrutiny will enter the assignment in the register.
Price- 4,999/- + Govt. Fees.
- Assignment Deed Drafting
- Assignment Application Preparation
- Free Expert Support
- Status Update
- Test Static
Is licensing of trademark assignment mandatory ?
The licensing of the assignment is voluntary. But it is advisable to get the trademark licensed as it has many merits to it and acts as valid proof to the assignment.
Can an assignment be licensed after monthsâ€™ time limit ?
An application must be made to the registrar within 6 months from the date of making an agreement . But the extension of the time period is under the discretion of the registrar.
What is the difference of assignment and licensing of assignment ?
A person can just merely create an assignment agreement for the transfer of rights or get it licensed through registrar by applying for licensing. The latter one is more advisable as it creates a protective shield to the assignee.
What are the documents required for licensing a trademark assignment ?
A valid identity proof of both parties, a copy of the assignment agreement and a filled form TM-P of Trademarks Act 1999 must be produced along with fee payment.
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India: Registration Of A Trademark Assignment: Mere Formality Or A Mandate?
With the advent of technology and newer trends of merchandising and marketing, the protection of an intellectual property of a person has become a dire need of the day. Consequently, the title related to a trademark is also a quintessential of it. This title can be transferred to another person or legal person through assignment, merger, transmission etc.
As per the provisions of the Trademarks Act, any person who is getting a title on any trademark by way of assignment or transmission shall bring himself on records of the Trademarks Registry as the proprietor of the trademark by making an application in the appropriate form with the appropriate fee. Now, the question which arises here is that what will be the status and position of an Assignee who has not made an application for registering himself as the proprietor of the trademark or whose application for such a registration is pending before the Trademarks Registry? While taking actions against third parties for infringement or passing off of its trademark, Should he be allowed to enter into the shoes of the Assignor by virtue of the assignment deed? Or should he be restrained form taking any such actions as he is not the proprietor of the Trademark as per the records of the Registry? The question has been discussed in detail below under various heads-
Procedure Relating To The Registration Of Assignments And Transmissions:-
Assignment of a trademark occurs when the ownership of a mark as such, is transferred from one party to another whether along with or without the goodwill of the business. Assignment agreements pertain to the transfer of intellectual property rights from, the owner of the rights to another person or organization. Assignment is an important aspect of this act, as per the section 2(1) (b) of the Trademarks Act, 1999; assignment has been described as "an assignment in writing by act of parties concerned". Thus this clarifies that for the assignment of trademark, it is necessary for the agreement to be in writing and to be act of an assignor and assignee of their own volition and not a third party.
Further, in case of registered Trademarks, the Trade Mark Act 1999 under section 40 also puts certain restrictions on the assignment of a registered trade mark wherein there exist possibilities of creating confusion in the mind of public/users. Such restrictions are:
- Restriction on assignment that results in the creation of exclusive rights in more than one person with respect to the same goods or services, or for same description of goods or services or such goods or services as associated with each other.
- Restriction on assignment that results in different people using the trademark in different parts of the country simultaneously.
Discretion Provided To The Registrar Under Section 45 (2) Of The Trademarks Act, 1999-
As per section 45 of the Act, an assignment deed needs to be registered in the appropriate form with the Trademarks Registry in order to bring the Assignee as an owner of the trademark on records. The Section runs as follows-
(1) Where a person becomes entitled by assignment or transmission to a registered trade mark he shall apply in the prescribed manner to the Registrar to register his title. And the Registrar shall on receipt of the application and on proof of title to his satisfaction register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or tranmission to be entered on the register. Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court.
(2) Except for the purpose of an application before the Registrar under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs .
As per the provisions of Section 45 and Rule 68 of the Trademarks Act, 1999, an application to register the title of a person who becomes entitled by assignment or transmission shall be made in Form TM-24 or TM-23 as it is made by such person alone or conjointly with the registered proprietor. Further, as per the practices of the Indian Trademarks Office, an affidavit for no legal proceedings pending related with the trademarks which are subject of the merger is also to be filed on behalf of the transferee company. Now, in case of a merger, since a proprietor registered on record is no more in existence and hence an application for change in title shall be filed in the name of the transferee. The Registrar may require statement of case to be verified by an affidavit on form TM 18 and may call upon the person concerned to furnish such proof or additional proof of title as he may require for his satisfaction. On proof of title to his satisfaction, the registrar will register him as a subsequent proprietor of the trade mark in respect of the goods or services and shall cause the particulars of the assignment or the transmission to be entered on the register. Once the trademark is assigned with goodwill, the assignor cannot in the eyes of law have any interest in the trademark assigned and the assignee alone, as a person interested in the trademark assigned, can represent in opposition proceedings as a party to protect its interest.
Position Of A Non-Registered Assignee In India
The law empowers the registrar to refuse to register the assignment or transmission when the validity of an assignment or transmission is in dispute between the parties, until the rights of the parties have been determined by a competent court [section 47 (2)]. The Registrar's refusal to register the assignment or transmission will naturally arise only before the actual change is effected in the register. The assignor or any other person may complain that the assignment is invalid or that it has been procured from him under circumstances entitling him to repudiate that transaction. In such circumstances the registrar cannot be expected to decide upon the validity of the assignment where it is challenged before him.
In Radhakashan Khandelwal vs. Asst. Registrar of Trade Marks 1 - The Delhi high court held that "it is true that the rules do not expressly require a notice to be issued or a hearing to be given to the party adversely affected by the order when an application on form TM 24 is made before the registrar, but there is in eye of law a necessary implication that the party adversely affected should be heard before an order for the removal of his name can be made against him.
Moreover if no entry has been made in the register, the document or instrument will not be admitted in evidence by the registrar or the appellate board or any court except for certain purposes as stipulated. The Registrar, or the concerned Authority as the case may be, has been given a discretion under this section to admit or not admit an assignment deed for which no application under Form TM-24 has not been made as an evidence of title of the assignee. Such a situation usually arises in cases where actions against third parties are involved. Very often the question as to the maintainability of a suit initiated by an unregistered assignee against the third parties has been dealt with by the Courts-
In Cott Beverage Inc., A Georgia ... vs. Silvassa Bottling Company on 7 October, 2003 2 - In this case, section 44 does not create a bar for filing a suit by the assignee whose application is pending disposal for registration. Discretion, however, is vested in the Court under Subclause (2) of Section 44 of the Act, whether to permit the said unregistered document in evidence or not. At the same time, it cannot be said that the procedure of registration of assignment is a mere formality. Section 44 has been incorporated merely as a safeguard by the Legislature in order to avoid the multiplicity of the proceedings and also in order to ensure that the various other laws prevailing in the country are safeguarded while registering the assignment. Thus, the grant of registration of assignment or transmission cannot be said to be a mere formality and on a conjoint reading of the provisions it will be apparent that the Registrar has to be satisfied after going through the application, which has to be filed in the prescribed form giving various particulars. In the present case, non-registration of the assignment will have to be considered as an important factor.
In Shaw Wallace & Co. (supra) 3 case- an application for impleadment of the assignee was under consideration. This court held that till the time the Registrar of Trade Mark, does not record the title in favour of the assignee, the deed of assignment cannot be admitted in evidence. However, the assignee was still impleaded as a party with direction to file the registration as and when accorded by the Registrar.
The above view of the Courts has also been contravened by other Courts. Emphasizing the fact that even if the assignment deed is not registerd with the records of the Trademarks Registry, it, itself is a valid instrument and hence permissible to be taken as an evidence of the assignee's title on the trademark.
IN Mohammad Zumoon Sahib vs. Fathimunnisa 4 , it was held that the " registration of assignment is not a condition precedent to an action for infringement by the assignee and an assignor of registered trademark will not be disentitled to an action on infringement on ground that assignment was not registered." The Madras court held that the law prescribes a procedure for the assignee or the representative to have registration of this title. The fallacy in the argument is that it is this registration by the Registrar under section 35(1) of the act that confers title .The title already exists in the legal representative and on proof of such title to his satisfaction; the registrar registers him as the proprietor of the trade mark. The plaintiff to the suit for infringement, whose name was not entered as subsequent proprietor, was allowed to maintain the suit on proof of prima Facie title to the mark.
Further, in Hindustan Lever Ltd. v. Bombay Soda Factory 5 , it was held that " the plaintiff could not be non suited merely because the change in the name of the registered proprietor had not been effected by the time suit was instituted. Registration of the name of the proprietor does not confer title on him. it is merely an evidence of his title. The plaintiff –company was the owner of the trademark in question at all times ."
In the case of Modi Threads Ltd. v. Som soot Gola Factory and another, 6 it was held that despite non registration of the application the civil suit was maintainable. The court held that it is true that the plaintiff's application for getting transferred and registered trade mark in its name in the office of the registrar is still pending but that does not debar the plantiff to protect the violation of the aforesaid trademark at the hands of unscrupulous persons by filing an action in court of law for injuction.so this is clear prima facie for the court.
Under sub section 2 of section 45 of Trademarks Act, the Registrar or the Competent Authority as the case may be, has been given discretion to admit or refuse to admit an unregistered deed of assignment as a proof of title of the assignee. However, another important thing the courts show that even without registration of assignment, a suit by the assignee is maintainable. If necessary, the suit may be stayed to enable the assignee to register the same. Therefore, it is an obvious fact that after an assignment or merger or transmission as the case may be the assignee has to step into the shoes of the assignor for purposes of any legal proceedings which are pending or indisposed.
Assignment agreements are of considerable importance in IPR since they allow the intellectual property owners to transfer their intellectual property for commercial returns, ensuring intellectual property can be used for monetary gains as well. So issues relating to ownership of IPR must be carefully considered .Though the law provides safeguards, but the slight ambiguity present in the Indian Trademarks Law on this point shall be dealt with by the legislature.
Ayush Vats Intern(Amity law school, Noida) 5 th year(2010-2015)
1 AIR 1969 Delhi 324, ILR 1969 Delhi 1227
2 2004 (29) PTC 679 Bom
3 105 (2003) DLT 586, 2003 (27) PTC 63 Del, 2003 (3) RAJ 224
4 (1960) 1 MLJ 270
5 AIR 1964 Kant 173, AIR 1964 Mys 173, (1964) 1 MysLJ
6 AIR 1992 Delhi 4, 1992 (22) DRJ 24
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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Trademark Assignment Process in India: A Comprehensive Guide
Transferring ownership of trademarks is a common practice, and it can be done through various methods such as assignment, merger, or amalgamation between entities. In this article, we will focus on the assignment procedure for trademarks in India.
Assignment of Trademarks: Trademark assignment involves the transfer of ownership of a mark from one entity to another. This transfer can occur with or without the goodwill of the business. Let’s explore the two types of assignments:
1. Assignment with Goodwill: This type of assignment involves transferring not only the rights but also the value associated with the trademark as it relates to the products or services being offered. For example, if the owner of the “OFIN” trademark, Ofin Legal Private Limited , assigns the trademark to another entity, the assignee will have the right to use the trademark for the same product.
Forms and Fees: To record the assignment of a pending trademark (with goodwill), you need to submit Form TM-M (Correction of Clerical Error or for Amendment U/R 37) along with an official fee of INR 900 per mark.
For a registered trademark (with goodwill), the appropriate form is Form TM-P (Subsequent Proprietor by way of Assignment or Transfer of Mark), and the official fee is INR 9000 for each assigned mark.
2. Assignment without Goodwill: In this type of assignment, the assignor restricts the use of the trademark by the assignee to specific products or services. The goodwill associated with the owner’s brand for the existing product is not transferred to the buyer. Both the assignor and assignee can use the same trademark but for different goods or services.
Procedure for Filing an Application to Record Assignment without Goodwill: To record an assignment without goodwill, the applicant must submit an application under Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill). The official fee for this form is INR 2700. The deadline to submit the assignment is six months from the date of filing. It is also possible to request an extension of three months, as per prescribed forms. The purpose of this application is to request the Registrar to advertise the assignment to the public.
After the assignment has been advertised, the applicant can file the Form TM-M or TM-P (depending on the status of the trademark) along with a copy of Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill) and the advertisement notice issued by the Registrar.
Documentary Requirements: To complete the assignment process, certain documents need to be submitted:
- Assignment Deed: A duly stamped and notarized assignment deed is required. The deed should include the effective date, full names and addresses of the assignor and assignee, their signatures, the consideration paid for the assignment, and details of the trademarks being assigned. For applicants outside India, the assignment deed must be notarized in the country of execution and stamped in India.
- Affidavit of No Pending Litigation: The Indian Trade Marks Registry now requires an affidavit confirming that there is no pending litigation and that the ownership of the trademarks is not in dispute. Along with the assignment deed, the assignee should submit a duly stamped and notarized affidavit containing the details of the assignment and the assigned trademark, affirming the ownership status.
If you need further assistance or have any questions regarding trademark assignment, you can reach out to us at [email protected] .
In conclusion, the process of trademark assignment in India involves submitting the appropriate forms, paying the required fees, and providing the necessary documents. It is crucial to comply with the regulations and follow the correct procedures to ensure a smooth and valid assignment of trademark rights.
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Trademark assignment agreement format in india.
Sample Template Example of Trademark Assignment Agreement Format In India For Free Download in Word / Doc
DEED OF ASSIGNMENT
THIS ASSIGNMEMT IS MADE ON THIS 10 TH DAY OF MAY, 2022
BETWEEN, SUPER TYRE LIMITED , a company incorporated under Companies Act,1956 of India and having its registered office at 23/4 N S Road, Hyderabad 434343, India (hereinafter referred as “the Assignor ”) of the one part.
AND , AGARWAL PRIVATE LIMITED , a company duly incorporated under Companies Act 1956 of India, having its registered office at 43/9 J B B Road, Hyderabad 432324, India (herein after referred to as “the Assignee” ) on the other Part.
WHEREAS the Assignor is the Proprietor of the Trademarks in India and as per Schedule “A” (hereinafter referred as “the said trademarks”).
AND WHEREAS the said Assignor has agreed to assign the said trademarks to the Assignee together with the goodwill of the business concerned in the goods for which the said trademark is registered and for the consideration hereinafter appearing.
NOW THIS DEED WITNESSTH , that in pursuance of this agreement and in consideration of the sum of Indian rupees 5,00,000.00 (Rupees Five Lacs only) paid by the Assignee to the Assignor, the receipt of which is hereby acknowledged. The Assignor HEREBY ASSIGNS its right and title and interest in and to the said trademarks to the Assignee TO HOLD the same unto the Assignee and its successors absolutely.
The Assignor also agrees and undertakes that, at the Assignee’ss cost if and whenever so required by the Assignee it shall sign, execute and do and shall use its reasonable endeavors to procure any third party to sign, execute all such documents and do all such acts and things as the Assignee may require;
a) To assist the Assignee or its nominees in making and/or pursuing any past, present and future claim, against any third party for infringement of any of its rights, title and interest assigned and,
b) To assist the Assignee or its nominee in defending any claim by a third party against the use of the rights, title and interest assigned to the Assignee .
The Assignee agrees with the Assignor to use the reasonable endeavors to take all reasonable steps to register promptly its interest in the Trade Mark Registry following execution of this agreement.
IN WITNESS WHEREOF, the parties hereto have executed and delivered this instrument as a Deed of the day and year first before written.
Signed on behalf of SUPER TYRE LIMITED (the Assignor) Witness :
Full Name : Sachin Tendulkar
Designation with seal : Director
2) Name :
Signed on behalf of AGARWAL PRIVATE LIMITED (The Assignee)
Full Name : Sorav Ganguli
Designation with seal : Director
SCHEDULE - A
LIST OF TRADE MARKS
Full Name : Sachin Tendulakar
Signed on behalf of AGARWAL PRIVATE LIMITED (The Assignee)
Full Name : Sorav Ganguly
Designation with seal : Director
Download Trademark Assignment Agreement Format
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Trademark Filing @ 6000/Only
A company owning a trademark, can transfer its rights related with the trademark to another entity by means of the following two most popular arrangements --- Trademark Assignment or Trademark Licensing. These both strategic arrangements are available in India to help the owners of trademarks. However, the Indian Trade Marks Act of 1999, did not use the term "License", the related term mentioned in this Act is the "Registered User". In this web-article, we are presenting exclusive information only about the trademark assignment in india, to help Indian and global owners of trademarks/service marks in harvesting and protection of their respective trademark/service mark in entire India.
Trademark Assignment is the action or process of transferring ownership and rights with/without the reputation related with a trademark to another entity in part or full by the original owner of the trademark, with or without some specified restrictions. On the other hand, in the licensing arrangement, the ownership over a trademark does vest with the original owner, only some specified restricted rights related with the trademark are transferred to another entity. The trademark assignment is made by way of a trademark assignment agreement, while the licensing is done by means of a license agreement. Naturally, the contents of both these agreements will be substantially different.
Assignment of Trademarks in India
- Complete Assignment of a Trademark: --- In the complete trademark assignment, the owner of a trademark or assignor transfers his ownership and all rights related with his trademark (including the right to make further transfer of ownership over the trademark to someone by the assignee, earn royalties, and so on.) to another entity or assignee engaged in the same or different field of business. After such a trademark assignment arrangement, the original/previous owner of the specified trademark does not retain any rights over the transferred trademark.
- Partial Assignment of a Trademark: --- In this arrangement, the transfer of ownership over the given trademark is limited to certain product(s) or service(s) only. Thus, the assignor holds some exclusive rights over the transferred trademark to use the same in the businesses of certain products/services of his choice. For instance, the owner of a trademark or brand related with tea and dairy products, may transfer his proprietary rights over tea to another entity through this arrangement, retaining his rights to use the trademark for dairy products.
- Trademark Assignment with Goodwill: --- This arrangement facilitates the transfer of both ownership rights and the image-value associated with a trademark in any specific field of business. After such an assignment arrangement, the assignee is enabled to use the market reputation of the trademark for identifying and promoting any other products of concern in future, in addition to the product sold (previously) by the assignor.
- Trademark Assignment without Goodwill: --- Under this arrangement, the assignor or seller of ownership rights restricts the assignee or buyer from using the said trademark in the business of the assignor's products. This means that, the same trademark is used by both the assignor and assignee after such an arrangement, for doing business in different fields. This type of trademark assignment is also called as the gross trademark assignment.
Recording the Change in Ownership with Trademark Registry
Whether it be a trademark assignment of a duly registered trademark or an unregistered (but used) trademark, the assignee should must record the change in ownership with the Trademark Registry in India within Six Months. The procedure for this includes filing the prescribed form (elucidated below), paying one-time official fees, submitting the trademark assignment agreement (also known as assignment deed ) and other demanded documents, and then, satisfying the concerned Registrar of Trade Marks. Our well-experienced and reputed, and veteran trademark lawyers can support both the assignor and assignee expertly in connection with all these tasks.
For recording the assignment of the registered trademark/service-mark, application is to be made in Form TM-23 or Form TM-24 http://ipindia.nic.in/tmr_new/first_schedule_forms/tm-24.pdf with the Registrar of Trade Marks, depending upon the case of whether the assignment is in full or in part, with or without the goodwill of the business of the assignor. In this connection, Section 38 of the Indian Trade Marks Act of 1999 and the Rule 68 of the Trade Marks Rules of 2002, may be referred to. On the other hand, the application form to be used in case of an unregistered trademark (refer to Section 39 of the Act) will be Form TM-16. After thorough examination of the assignment deed and other documents, the assignment agreement will be published in the Indian Trade Marks Journal, and then will be allowed for entry in the Trademark Registry, if no opposition raised by any person/entity.
For more information on Trademark Assignment in India please share your Query at [email protected] or call at +91-8800-100-281