Among Asia's Top 100 Consulting Firm
10,000 + Happy Customers
Lowest Fees
4.5+ Google Rating
Expert Assistance
Trademark Assignment
Trademark assignment is a legal written document executed between the assignor and assignee. Trademark Assignment in India acts as the portion of the transfer of ownership of rights, title, and interest from one party to another, it can be recognized by word, phrase, and symbol or design or trademark related to the business.
Trademark Assignment – Overview
Trademark assignment is a formal written document that acts as the part of the transfer of ownership of a recognized phrase, word, and symbol or design or trademark from one party to another. The Current Owner of that particular trademark is known as “the Assignor”, and the future owner is named as “the Assignee”.
A trademark is a valuable asset or prized possession as it helps the end-users to link with the same qualities with a known brand quickly. This trademark agreement helps the owner to transfer the goodwill of the trademark properly to another party without facing any problems or hurdles.
Checklist of Trademark Assignment Agreement
A simple Trademark Assignment Agreement will key out the following basic checklist:
- Trademark: – That describes the legally distinguished word, phrase or symbol or design including the official trademark number if the trademark has been filed in the U.S. Patent and Trademark Office.
- Effective Date – When the recognized trademark is formally transferred to the mark owner.
- Consideration- Fee payment is paid for the mark
- Assignor- the current owner who is owning the trademark
- Assignee – the future owner who is giving money to get or to own the trademark
- Warranties- the assignor assures that the Assignor is the true present owner and have the power to transfer the ownership and own the power or right to transfer the trademark
- Signatures- that states that the assignor and the assignee must come to a contract or an agreement
- Notary Public- The agreement or the contract must be notarized in case the assignee expects to register the trademark outside the country.
Types of Trademark Assignment Agreement
- Assignment and Transfer Agreement
- Assignment of Intellectual Property Rights Agreement
- Transfer of Trademark Rights
- Intellectual Property Assignment
- Trademark Purchase and Trademark Assignment Agreement
Inclusions in the Trademark Assignment Agreement
The Trademark Assignment Agreement should hold the following details:
- Name of the current owner of the trademark and the new owner.
- What does the trademark consist of and any related trademark registration?
- The place where all the disputes will be handled if there is any chaos stands up.
- The reason for the Assignor to hold the right to transfer the trademark and related goodwill.
- Time in which the registered trademark is transferred to the new official owner.
- The amount paid to the assignor by the assignee to obtain the trademark.
Procedure to document the trademark assignment with the Registry
Assignment of the undocumented Trademark- As per Section 39, the unregistered trademark could also be transmitted or allowed with or without the goodwill of the business concern involved.
Assignment of the Registered Trademark – the trademark can partly or completely transmit or allot with or without the goodwill of the business concern to another company. The fee for the trademark assignment varies depending on the nature of the assignment.
The Need of Trademark Assignment Agreement in India
It is a legally written document that helps in transmitting the ownership of the trademark or service mark when required. A transfer of trademark or ownership comes into the action when a company or product is being sold to another organization or person.
Types of Trademark Assignment Agreement
The consequences of not using the Trademark Agreement
There will be a dusky vision on the business report who currently have the trademark without the Trademark Assignment. Therefore, the following are the results for not using the agreement
How Does Trademark Assignment Work In India?
The transfer of a trademark can be done in different forms. The owner of the trademark can transfer all the rights and power with respect to a trademark to another business in different ways.
- Example 1
The proprietor of a brand XYZ Pvt Ltd sells his mark fully through an official agreement to ABCPvt Ltd. Once the transferring process is completed, XYZ Pvt Ltd doesn’t hold any power or rights on the brand name or trademark. This is known as A Complete Assignment of Transfer of Trademark.
- Example 2
Mr Sundaram, the proprietor of a trademark or brand used for pickles, spices and sauces. He transfers the rights in the brand-related to spicy products to Lalitha but it holds the rights in the trademark or brand related to pickles and sauces. This is known as the Partial Assignment of Trademark.
After that, there are various types of Trademark Assignment that are mentioned below-
Assignment with Goodwill: The power and value of a brand or trademark are related to the product which is also transferred to another entity. The assignment without the Goodwill- Here the owner limits few rights of the new owner. Thus, in this type of trademark assignment, the goodwill is attached to those brands with respect to the product.
Frequently Asked Questions
Trademark assignment issued when the right for the trademark in that capacity is transferred commencing with one gathering then onto the next whether with or without the generosity of the business.
An application for a trademark assignment can be done using Form TM-24. For the joint Trademark Assignment request, the assignor and assignee can use Form TM-2 to make a request
You can search in federally registered trademarks. And you can use a free trademark database on the USPTO’s website to know if a brand or product or service is trademarked.
The national statues- the trademarks Act 1999 and rules made such as an International multilateral convention, regional treaty, national bilateral treaty, the decision of courts and so on.
