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Intellectual property is like any other property, can be transferred from one owner to another. Likewise, Trademarks are also transferrable. Trademarks are essentially very intricate business properties which can be transferred with or without goodwill.
Now to understand how trademarks are transferred from one owner to another, it is important to understand what legal instruments affect the trademark transfer.
The transfer is known as Trademark assignment which means “all the usage rights or incidental rights, partial or complete are transferred from owner or proprietor to another person”
Now there may two types of transfer 1) may be partial assignment that is generally known as licensing wherein the trademark to be transferred is transferred to other interested party for a fix amount to time and on basis of pre defined terms and conditions.
The second type of transfer is by way of Assignment wherein the transferor (The trademark owner) by virtue of assignment deed transfers all the bundle of rights associated with the trademark in question to the transferee (The person who buys the trademark)
Goodwill Transfer V/s Without Good will Transfer
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Now this assignment may be done in two ways 1) with good will or 2) without goodwill Now question arises what exactly is good will and what is the key difference between a trademark assignment affected with or without goodwill.
Suppose, Maggie decides to assign its trademark with goodwill that means that the transferee will have complete right over the transferred trademark, be to use, assign, change, license etc. its just like the original owner or the transferor is replaced by transferee.
Where as in case the trademark Maggie which is essentially associated with instant noodles, transfers its trademark in respect of a single good for example soups etc. This particular transfer which is restricted to specified usage and particular good is known as trademark assignment without goodwill since still huge bundle of original rights are intact with the transferee.
Now in order to license or assignment a person must take into consideration the good will of the brand name, usage in associated goods or services also the impact that may occur because of such transfer.
To affect the trademark assignments there exists various legal requirements to be fulfilled that vary by jurisdiction to jurisdiction, in most jurisdictions a valid trademark assignment must have a written documentation namely assignment deed must clearly identify the parties associated with the trademark transfer and shall mention the effective date of the such transfer along with all terms and condition including the applicable jurisdiction, it is also advisable to clearly mention the particulars of the trademark assigned such as brand name, class, its current status or date of registration etc.
Apart from above, in case we talk about trademark assignment specific to Indian jurisdiction, the timeline in such assignment is very important.
$$ Hurry or Loose Money $$
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As it is important to legally record the trademark assignment, in India the fee for such recordal changes with the time passed from the effective date of trademark assignment execution. For example fee for trademark assignment done within six month from date of execution will be merely 4000 but may increase if done after 6 months or a year.