Overview of Trademark Assignment
Trademark assignment is classified as a part of the ownership transfer of a trademark from one entity to another. Trademark Assignment takes place whenever the ownership rights of a trademark or brand, is transferred from one owner or entity to another. This can be done be with goodwill or without the goodwill of the business entity.
In the case when the Trademark is registered, such assignment is necessary to be recorded in the Register of trademarks. A Trademark can be transferred through agreements and deeds between two parties.
It generally involves a one-time payment. Such agreements are called assignment deed. In both cases i.e. in registered or non-registered trademark assignment, the assignee has to apply to the Registrar of Trademark within six months.
Categories of Trademark Assignment
A range of Trademark Assignments is accepted in India. On the foundation of requirement, the parties will come under a specific type and as a result, the Trademark Assignment agreement will be drafted. Following are the categories of Trademark assignment in India:
Restrictions Stated Under Trademark Act, 1999
According to the provisions stated under the Trademarks Act of 1999, there are various restrictions that can be imposed on the assignments of any registered Trademark. They are as follows:
Use of Trademark by several people in various parts of the country
Creative rights are not allowed to be created for more than one entity regarding the same goods and services.
Benefits of Trademark Assignment
Following are the benefits of the Assignment of Trademark:
Valuation of Trademark
Whenever a brand is formed, it necessitates a lot of time, money and also hard work. Therefore, by the process of assignment of Trademark to any third party the owner of the Trademark can get the cash value of the Trademark.
Assignment of Trademark is a valid proof
Assignment of Trademark can serve as evidence in case any dispute arises in regard to the assignment of the trademark. The legal rights of the owner of the trademark are well protected by such assignment agreements.
Already established brand
The owner of a trademark enjoys the advantage of dealing in an already existing trademark.
Methods of Drafting Assignment of Trademark
Drafting an Assignment of Trademark Agreement is the most essential and crucial step in the process of trademark agreement. This process must always be prepared under the guidance of an experienced professional. Following are some of the indispensable elements which should be kept in mind while drafting of assignment of trademark:
Registration of Assignment of Trademark
In order to register an Assignment of Trademark with the registry of trademarks following procedure must be followed by the authority:
Assignment of an Unregistered Trademark
As stated under section 39 of the Trademarks Act of 1999 any unregistered trademark can be further allotted with goodwill or without goodwill. The proposal for such a process can be made under Form TM-16.
Assignment of a Registered Trademark
The provisions of section 38 of the Trademark Act of 1999 explain the transmission of the Trademark with goodwill or without goodwill. Such Trademark assignment can be done via Form 23 and 24.
What is the process of drafting a Trademark Assignment?
The primary step for the procedure of assignment of a Trademark is to apply for the assignment. The parties, assignor or assignee can apply for an assignment.
The application made for this process must contain all the detailed information regarding the transfer under the form TM-P.
Once the application process is complete, it must be filed with the Registrar of the Trademark.
This process has to be completed within the prescribed time frame of 6 months of proprietorship acquisition.
Condition relating to the advertisement of the assignment of a trademark should be given by the Registrar.
A certified copy of the advertisement for assignment of the mark made along with a copy of the declaration of Registrar must also be submitted.
After all the submitted documents are examined, the Registrar of trademarks has to officially transfer the ownership of the Trademark from one owner to another owner.
Conclusion
Trademark Assignment takes place whenever the ownership rights of a trademark or brand, is transferred from one owner or entity to another. This can be done be with goodwill or without the goodwill of the business entity. The provisions of section 38 of the Trademark Act of 1999 explain the transmission of the Trademark with goodwill or without goodwill.