Trademark Assignment Process

The owner of a trademark may sell, licence, transfer, or otherwise transfer it. The Trademark Assignment Process is used to transfer trademark ownership from one person to another. The owner of a trademark may assign it to a third party or grant the recipient a license. The assignee acquires ownership of the trademark after it is assigned. The term “trademark assignment” is defined in this article, along with the Trademark Assignment Agreement, the Trademark Assignment Process, and any pre-requisites required for registering the trademark assignment in India.

What is Trademark Assignment in India?

A trademark is intellectual property, and the owner has the same rights as other types of assets, such as the ability to sell, license, or transfer their intellectual property. Trademark licensing and assignment are addressed in the Trademark Act of 1999. The assignor, like any other owner of property or assets, has the right to sell, licence, or transfer the trademark. The process of changing registered trademark ownership is known as the Trademark Assignment Process. The Trademark Assignment Agreement or Trademark Licensing can be used to transfer trademarks. To transfer ownership of a registered trademark to a third party, the assignor must first draught and file a Trademark assignment agreement with the appropriate authorities. Before the assignment process can begin, the agreement must be signed. This does not preclude a third party from using a registered trademark of a well-known company. The assignment must be entered into the trademark register if the trademark is registered.

Points should be keep in mind while Trademark Assignment Agreement

• The rights to the trademark should not be jeopardized as a result of the agreement’s obligations.
• The decision and requirement regarding whether the assignment is with or without the business’s goodwill must be made explicit.
• The purpose of the transaction or assignment should be clearly stated in the agreement.
• The geographical scope of the location where the assignee possesses the trademark’s values and rights must be specified.
• It is necessary to mention the transfer of the right to collect and sue for damages for both future and past infringements.
• The agreement must be duly executed, which means it must be stamped and notarized in accordance with the applicable Stamp Act.
• Signatures and witnesses must be listed.
• The location and date of agreement execution must be specified.
• The assignment’s date and day, as well as the parties involved, must be specified.
• The agreement should state whether or not the legal heirs of the assignor and assignee are bound by it.

Trademark Assignment Process in India

1. Application for Trademark Assignment: First and foremost, an application for a trademark assignment must be made by the Assignor or Assignee, or both, and can be made jointly. The parties must specify whether they want an assignment with or without goodwill, and the registrar must promote the application.
2. Filling out the TM-P form: The next step is to fill out the TM-P form with all of the necessary transfer information. They must work with a professional to create an agreement outlining their terms and conditions. Within six months of the agreement’s formation, an application must be submitted to the registrar using the TM-P form and all necessary documents relating to trademark assignment with the Registrar of the trademark. The filing must be completed within six months of the date of acquisition of the proprietorship.
3. Document Submission: After submitting the TM-P form, you must submit all of the necessary documents for Trademark assignment to the Registrar of the Trademark within 6 months of acquiring proprietorship. For this Trademark Assignment Process in India, trademark certificates, assignor NOCs, as well as id proofs from the assignor and assignee, were required.
4. Application processing: Once the assignment application and all required documents have been successfully submitted, the application will be processed. A copy of the instruction and assignment announcement must be provided to the Trademark Registry office to determine whether the registrar’s instructions were followed correctly or not.
5. Advertisement of the Assignment: As soon as your application is approved, you must advertise for the assignment in the manner specified by the Registrar. Also, submit a copy of the Registrar’s directive and an advertisement for the assignment in the Registrar’s office. The trademark registrar will specify the manner in which the trademark assignment will be advertised. The applicant is required to make an advertisement for the trademark assignment in accordance with the registrar’s specifications. The applicant must submit a copy of the advertisement as well as a copy of the registrar’s direction to the registrar’s office.
6. Approval of the Assignment: Upon receipt of the trademark assignment application and supporting documents, the Registrar will verify the application and, if satisfied, will approve the application. The Registrar, on the other hand, will register the assignee as the proprietor of the trademark and will enter the details of the assignment in the register.

 List of prerequisites for trademark assignment

• The assignment must include the following two identifying parties: assignor and assignee.
• An assignor is the trademark’s owner, and an assignee is the trademark’s buyer.
• In order to transfer a trademark, the assignor must have the intention and consent to do so, and the transfer must be in writing.
• For proper consideration, the trademark must be assigned.

Are Trademark Assignments and Trademark Licensing the same thing?

• There is no change in ownership in trademark licencing, and a third party is granted limited rights to use the trademark. This is not the case with trademark transfers. The ownership of the trademark is transferred to the third party, along with its rights, loyalties, and entitlements, in trademark assignment.
• A trademark assignment is a transfer of ownership of the trademark registration. Whereas in licencing, the original owner retains ownership and proprietary rights to the trademark, but only a few limited rights to use the brand are granted to the third party.
• The assignment deed must be in writing, but licencing does not have to be in writing.
• An assignment can be complete or partial, whereas a licence grants you rights for a set period of time.
• An assignment isn’t time-sensitive; ownership has passed, but licencing is only valid for a limited time.

Conclusion

A trademark transfer or allocation is the process of legally transferring ownership of a trademark from the principal owner, also known as the assignor, to the recipient, also known as the assignee. This blog will teach you everything there is to know about trademark assignment. We strongly advise you to entrust your trademark assignments to the LegalRaasta legal adviser’s team, who are the most reputable trademark professionals in India. Our experienced team is well-versed in the complexities of trademark registration. Both the assignor and the assignee must plan carefully when transferring a trademark. The assignment of a trademark necessitates careful planning on the part of both the assignor and the assignee. The trademark assignment provides many opportunities for the parties by allowing the assignee to gain access to the brand with the permission of the original owner. Furthermore, trademark assignment helps to keep the brand alive. Contact Legalraasta for the most satisfactory and comprehensive Trademark Assignment Process solution.