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Trademark Assignment

A company owning a trademark, can transfer its rights related with the trademark to another entity by means of the following two most popular arrangements --- Trademark Assignment or Trademark Licensing. These both strategic arrangements are available in India to help the owners of trademarks. However, the Indian Trade Marks Act of 1999, did not use the term "License", the related term mentioned in this Act is the "Registered User". In this web-article, we are presenting exclusive information only about the trademark assignment in india, to help Indian and global owners of trademarks/service marks in harvesting and protection of their respective trademark/service mark in entire India.

Trademark Assignment is the action or process of transferring ownership and rights with/without the reputation related with a trademark to another entity in part or full by the original owner of the trademark, with or without some specified restrictions. On the other hand, in the licensing arrangement, the ownership over a trademark does vest with the original owner, only some specified restricted rights related with the trademark are transferred to another entity. The trademark assignment is made by way of a trademark assignment agreement, while the licensing is done by means of a license agreement. Naturally, the contents of both these agreements will be substantially different.

Assignment of Trademarks in India

In India, the ownership of a registered trademark/service mark (and even that of an unregistered trademark) may be assigned or transferred to another entity by any of the following means:
  • Complete Assignment of a Trademark: --- In the complete trademark assignment, the owner of a trademark or assignor transfers his ownership and all rights related with his trademark (including the right to make further transfer of ownership over the trademark to someone by the assignee, earn royalties, and so on.) to another entity or assignee engaged in the same or different field of business. After such a trademark assignment arrangement, the original/previous owner of the specified trademark does not retain any rights over the transferred trademark.
  • Partial Assignment of a Trademark: --- In this arrangement, the transfer of ownership over the given trademark is limited to certain product(s) or service(s) only. Thus, the assignor holds some exclusive rights over the transferred trademark to use the same in the businesses of certain products/services of his choice. For instance, the owner of a trademark or brand related with tea and dairy products, may transfer his proprietary rights over tea to another entity through this arrangement, retaining his rights to use the trademark for dairy products.
  • Trademark Assignment with Goodwill: --- This arrangement facilitates the transfer of both ownership rights and the image-value associated with a trademark in any specific field of business. After such an assignment arrangement, the assignee is enabled to use the market reputation of the trademark for identifying and promoting any other products of concern in future, in addition to the product sold (previously) by the assignor.
  • Trademark Assignment without Goodwill: --- Under this arrangement, the assignor or seller of ownership rights restricts the assignee or buyer from using the said trademark in the business of the assignor's products. This means that, the same trademark is used by both the assignor and assignee after such an arrangement, for doing business in different fields. This type of trademark assignment is also called as the gross trademark assignment.

Recording the Change in Ownership with Trademark Registry

Whether it be a trademark assignment of a duly registered trademark or an unregistered (but used) trademark, the assignee should must record the change in ownership with the Trademark Registry in India within Six Months. The procedure for this includes filing the prescribed form (elucidated below), paying one-time official fees, submitting the trademark assignment agreement (also known as assignment deed) and other demanded documents, and then, satisfying the concerned Registrar of Trade Marks. Our well-experienced and reputed, and veteran trademark lawyers can support both the assignor and assignee expertly in connection with all these tasks.

For recording the assignment of the registered trademark/service-mark, application is to be made in Form TM-23 or Form TM-24 with the Registrar of Trade Marks, depending upon the case of whether the assignment is in full or in part, with or without the goodwill of the business of the assignor. In this connection, Section 38 of the Indian Trade Marks Act of 1999 and the Rule 68 of the Trade Marks Rules of 2002, may be referred to. On the other hand, the application form to be used in case of an unregistered trademark (refer to Section 39 of the Act) will be Form TM-16. After thorough examination of the assignment deed and other documents, the assignment agreement will be published in the Indian Trade Marks Journal, and then will be allowed for entry in the Trademark Registry, if no opposition raised by any person/entity.

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