Trademark is an intellectual property and like any other asset, the owner of a trademark has the right to sell, license or transfer the owned intellectual property. Such a transfer can be made through Trademark Assignment Agreement or through Licensing.
When a trademark is assigned, there is a change in the ownership of the registered brand. But when it’s licensed, the rights in the trademark continue to vest with the original owner but only a few restricted rights are given to the third party. This assignment can be made with or without transferring the business goodwill. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.
Trademark rights are transferable through assignment agreements. When a trademark is assigned by an owner to another party, its ownership is conferred upon the other party, either completely (with goodwill) or for a limited number of products or services (without goodwill). It usually involves a one-time payment. Such an agreement (often called an assignment deed) can be signed even if the trademark is unregistered; creative designers, for example, are often asked to assign ownership of the work to the entity that commissioned it. Registered trademarks can also be assigned, of course. In both cases, the assignee must apply to the Registrar within six months.
Benefits of Assignment of Trademark in India
Get your trademark's value
Brand creation involves a lot of money, time and hard work. With the assignment of Trademark in India, the trademark owner(s) can encash the value of a brand which until now existed only on papers. The combined efforts create more value and the assignor can always put appropriate restrictions. Assignment Agreement is Valid Proof In case of any trademark-related dispute, the legal rights of the assignee would easily be established through the trademark assignment agreement. The Registry ensures that all the checks are in place by examining the validity of all the clauses mentioned in the agreement and publishing the assignment in the Trade Marks Journal. Pre-
established brand name
The assignee has the advantage of dealing in an already existing and established a brand name. The time, efforts and investment for creating brand value are saved for the assignee. Expansion of business In the case of licensing, the assignor’s business increases as more vendors join to contribute in brand building. The brand value will propel with the combined efforts of assignor and assignee.
Types of trademark assignment in India
All the rights vested in the trademark are assigned to the third party, including the rights to further transfer, to earn royalties, to license, etc
Assignment limited to only some goods/ services
In this assignment, the transfer of ownership is restricted only to certain products/services as decided in the Trademark Assignment Agreement.
Assignment with Goodwill
In this case, the value and the rights attached to the trademark are also transferred. This makes new owner of the trademark eligible to use the assigned brand name with respect to the products and services already sold under the brand name. Also, it grants permission to use the acquired trademark for any new venture or product the new owner creates or manufactures.
Assignment without Goodwill
Also known as Gross Assignment, here the brand owner restricts the rights of the assignee, limiting user rights of the new assignee and prohibiting him/her from using the brand name for the products already in use by the assignor. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand is not transferred to the buyer
Documents To Be Submitted
- TM Certificate | Certificate of Trademark Registration (if any)
- Details of the Party | Name and description of the assignor and assignee
- NOC | No Objection Certificate from the original owner of the registered trademark