Trademark Assignment with Company360

What is Trademark Assignment?

Trademarks like any asset can be transferred by one titleholder to another in simple words can be transferred from owner to another person. The transfers could be made in the form of temporary arrangements through licensing or permanently through an assignment. The assignment of trademarks is a process by which the owner of the trademark transfers his ownership of the mark, together with or without the goodwill of the entity which possesses the trademark. In other words, it is transferring of proprietary rights in the property of the titleholder. An Trademark assignment can be done in the following:

1) Exhaustive assignment of trademarks In an exhaustive assignment, the owner of the trademark transfers all the rights concerning the trademark, including the transfer of the rights such as the right to further transfer, earn royalties, etc., to another person or entity.

2) Partial assignment of trademarks In a partial assignment, the transfer of ownership is restricted to one or more specific products or services only. The owner may retain the right to further transfer the withheld title to any other entity, to earn royalties.

3) Assignment with goodwill This is an assignment where the owner transfers the rights and value of the trademark as connected with the product it sells;

4) Assignment without goodwill This is an assignment of trademark where the owner restricts the assignee to use a trademark for the products, those he uses it for. That is, the goodwill attached to the owner’s brand for the product already being sold in the name and style of such a brand is not transferred to the buyer. This implies that both the assignor & assignee can use the same trademark but in dissimilar platforms.

Once a trademark is assigned to a third party, it is important to record the change in ownership in the Trademark Registry. Specific procedures together with fees have to complied with to ensure that the records reflect the ownership details.

Procedure to record the assignment of a trademark with the Trademark Registry:

1) Assignment of an unregistered mark: According to Section 39 of the Trademark Act, an unregistered trademark may be assigned with or without the goodwill of the entity concerned. A request has to be made along with the form TM-16 for an unregistered trademark to be assigned or transferred.

2) Assignment of a registered trademark: Section 38 stipulates that trade Marks can be either assigned in full or in parts, with or without the goodwill of the entity. All transmissions or assignments should compulsorily be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. (Rule 68 of the Trademarks rule, 2002).

Fees:

This depends upon various factors such as current status of the Trademark transferred and date of assignment of the Trademark.

Other Procedural Requirements:

  1. The assignment deed must be in writing and the name of the assignor’ must be the as that in the Trade Mark Register.

  2. It is mandatory that the territorial extent of the assignment is clearly laid down in the transfer deed. The Territory of the assignment should always be express and cannot be implied.

  3. The mark/marks that the proprietor wants to assign must be described in detail;

  4. The consideration for which the assignment is made should also be mentioned in the deed of assignment; the standard phrase of “good and valuable consideration” wouldn’t hold good in case of Assignment; The stamp duty has to be calculated based on the consideration mentioned in the deed.

  5. The effective date of the assignment must be laid down clearly in the deed;

  6. assignment deed should always mention if the assignment is together with the goodwill or not.

Trademarks are valuable assets since they quantify an entity’s reputation and goodwill. While making sure the assignment is in the order you also have to keep the records of the trademark registry updated with the changes that were carried out.


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