Trademark Assignment in India
Trademark can be referred to as the brand name, logo, mark or tag line etc that is associated with the products and services in order to distinguish them with others competitors in market. Trademark is an intangible asset that provides the exclusive usage rights to the owner of the mark. Like every other asset the trademark can also be Transferred from one owner. The process of Trademark rights from one owner to another is known as the Trademark Assignment. There is a complete procedure that is required to be followed for trademark assignment. In this blog we will be taking a look at the meaning of Trademark Assignment and the process to conduct that.
In simple terms Trademark assignment is the procedure of transferring the rights of the trademark from one owner to other. There are multiple kinds of Trademark assignment that varies from the transferring the complete rights or partial rights. Here are the following kinds of Trademark assignment –
The owner of the trademark possesses the exclusive rights to use, sell or process etc. In the complete Assignment the owner of the trademark transfers all the rights completely to the other owner for some consideration. After the assignment the other owner gets the right to any transfer, earn royalties etc.
In the partial Assignment the complete rights of in respect of all the products and services are not transferred rather the rights are restricted to some products and services. The owner transfers only the rights in respect of certain goods and services and not the comprehensive rights.
Assignment with Goodwill
It is a type of complete transfer only wherein the owner of the trademark transfers all the rights with respect to the products and services used by him. In return of some consideration this transfer is conducted.
Assignment without Goodwill
When the owner of the trademark transfers the rights to others owner while keeping some rights in respect of certain goods to himself this transfer is known as the assignment without goodwill. In this assignment the owner keeps the goodwill he own with respect to certain products intact and restrains the other owner to use in the similar kinds of products or services.
Procedure of Assignment of Trademark
Making an Application – In order to conduct the Trademark assignment the application must be made either by the assignee or the assignor of the trademark. Also, joint application can be made by both specifying the details of the prior and subsequent owner details. Trademark form TM-P shall be filed in the ministry with this regard. One important thing to be noted here is that the form is required to be applied within 6 months of acquisition of proprietorship in question.
Acquiring the order of Registrar – The procedure of transferring the registered mark or the transfer with goodwill is distinct from other trademark assignment procedures. In both of these transfers there is a requirement of receiving the approval from the registrar of the Trademarks.
Advertisement of Trademark Assignment – In the process of Trademark assignment the Registrar may direct the applicant to get the details of the assignment advertised. The applicant shall abide by the director of the registry and make the advertisement in the required manner. The ideal compliance will include submitting of the copy of the advertisement along with a copy of the Registrar’s direction.
Final Step – If the registrar is satisfied with the application filed, the application made and the other documents submitted he may officially transfer the proprietorship of the said trademark from the original owner (Assignor) to the new proprietor (Assignee). After the successful assignment the name of the new owner will be entered as the new proprietor of the said trademark. As a result the new proprietor can use the said trademark legally with all the rights secured in his name.