Trademark Assignment And Transfer Procedure in India

Introduction

Just as a land owner and other physical property owner sell his property to others, a trademark owner also has the right to sell and transfer his trademark to others. A possible way of transferring and selling the trademark is trademark assignment.

Trademark Assignment And Transfer Procedure in India defines transferring the rights, interests, and benefits of the owner and changing the trademark ownership to another person. The party transferring is call the assignor, and the party receiving is call the assignee. Register and unregister trademarks both can assign. 

What is Trademark Assignment And Transfer?

The process of transferring and selling the legal rights, benefits, and interests of trademark owners and ownership of a trademark to another person is called trademark assignment. It is a process of transfer of a trademark to another party. It is controlled under section 37 of the Trademark Act, of 1999.

The transfer of a trademark between two persons is carried out by deeds and agreements. Stamp duty is an important element in the process of trademark assignment. It makes trademark assignment acceptable. It is a tax imposed by the government. Without stamp duty, documents are not legally valid.

Types of Trademark Assignment And Transfer

Partial Assignment:

A partial agreement occurs when the agreement allows a certain portion of the legal rights to use the trademark. This means that the trademark owner transfers only a certain part of the ownership of goods and services.

Complete Assignment:

In the complete assignment, the owner of the registered trademark transfers his all legal rights, benefits, and interests to the assignee. the assignor will lose ownership and the assignee will own the trademark. 

Assignment with the goodwill of the business:

The trademark owner transfers all his legal rights and value of the trademark to the purchasing party, in the Assignment with the goodwill of the business.

Assignment without the goodwill of the business:

The owner of a trademark may restrict the buyer’s rights when transferring the trademark, In the assignment without the goodwill of the business. Here the assignor prevents the buyer from using the brand of the product that is already being use by the owner. This means that the goodwill associate with the brand is not transfer to the assignee.

Pre-requisites for Trademark Assignment:

• Trademark assignments should be in writing.
• The assignment must take place between two parties, the assignor (owner of the trademark) and the assignee (purchaser of the trademark).
• The assignor must have both the intention and consent for the trademark assignment.
• The trademark assignment must be for a reasonable substantial amount.

Who Can Assign a Trademark?

The owner of a trademark has the right to assign his trademark to someone else. The owner has an option to assign the part of the trademark to another person, such as to use the rights in a particular region.

Trademark Assignment Agreement

It is a legal document that covers all terms and conditions of transferring the trademark from one to another.

1. The name, address, and other information of both parties should mention in the agreement.
2. The registration number and description of goods and services must mention in the agreement.
3. The exchange amount or value of the assigned trademark should state in the agreement.
4. The date when the trademark is assigned to the other party must mention in the agreement. 
5. The agreement should specify the procedure for resolving disputes between the parties.
6. The agreement must sign by both parties.

Benefits of Trademark Assignment

• Trademark assignment allows the trademark owner to avail the value of his brand.
• The assignee gets the legal rights of an already register trademark.
• It helps both the owner and the purchaser party to elongate their businesses.
• The assignor and assignee can protect their legal rights by written trademark assignment agreements. Besides, it is also helpful in resolving disputes between the parties.

Required Documents For Trademark Assignment

1. Agreement of Trademark assignment,
2. Certification of Trademark 
3. NOC from the assignor,
4. ID proofs of both the owner and the purchaser party.
5. Form Tm-P
6. Payment Of Fee

Process of Trademark Assignment/Transfer

• Through a trademark assignment agreement, the trademark owner assigns the rights to his trademark to the assignee.
• Application for trademark assignment in Form TM-24 or Form TM-23 can be filed by the assignor the assignee or both.
•  Form TM-P Filing.
• All necessary documents related to trademark assignment will be filed with the Trademark Registrar within six months from the date of acquisition of ownership.
• The Trademark Registrar will specify the Advertisement of Trademark Assignment.
• Based on the specification of the Registrar, It is mandatory for the applicant to advertise for trademark assignment.
• The applicant has to submit a copy of the advertisement and a copy of the Registrar’s instructions to the Registrar’s office.

Why A Star Legal

A Star Legal is a team of experts that includes lawyers, CA, business advisors, and CS. It is one of the best platforms that coordinates all your legal needs and constantly connects you with professionals. We provide trademark registration of all types. To learn more about us, visit our official website A Star Legal Associates contact us. you can also call us at – +91 (0) 9314321001. we will provide you with all the information regarding the registration of the trademark. 

Conclusion

Trademark Assignment And Transfer Procedure in India is beneficial for both the assignor and the assignee. The process of trademark assignment is time-consuming and needs many documents and proper planning but it can open many opportunities for both parties. 

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