What is trademark assignment in India?
Any owner of a brand or trademark has the right to sell, license, transfer, etc. its trademark. Trademark assignment is the process of transferring ownership of a trademark from one person to another. The trademark owner transfers all rights of the trademark to the receiving party. The trademark owner may transfer his rights by assignment or by licensing. After the trademark assignment, the assigned becomes the owner of the trademark. The Trademark Act, 1999 has dealing with trademark assignment and licensing. What is your exact need?. Here, in this we will get to know about What is trademark assignment in India? – Trademark Registration in Tirupur.
The transfer of ownership and rights over a trademark to another person or entity is legally known as a trademark assignment. An appointment is partial, commonly known as licensing. In addition, it may be assigned to all goods or services with or without goodwill in respect of any part thereof. A trademark is usually assigned by the execution of an agreement between the parties known as a trademark assignment agreement. The most important requirement for a valid assignment agreement is that the assignor’s portion be shown to transfer full or partial ownership of the mark
Types of Trademark Assignment in India
Multiple types of trademark assignments are accepted in India. Based on the need and requirement, the parties fall into a specific type and accordingly, the assignment agreement is drafted.
In this case, all rights reserved to the registered trademark are assigned to a third party. The assignee acquires all the rights held by the original trademark owner. The Assignee is the sole owner of the trademark, allocating, trading and marketing it and preventing others from using it without authority.
In this type of assignment, the transfer of ownership is limited to certain products / services as determined by the parties and expressed in the Trademark Assignment Agreement. For example, if the trademark “Ova” is specified in the assignment agreement by the owner, the assigned trademark can only be assigned to food products that are suitable for human consumption. He will then not use the mark for any goods / services other than food products for human consumption.Now, both, full and partial appointment can be made with or without goodwill.
Assignment in good faith
When an appointment is made amicably, the rights and value associated with the trademark are given to the assignee to use the mark for the products and services they are already selling.
For example, the owner of “Ova” owns the trademark for the manufacture and sale of shoes, and may assign the trademark the right to use the said trademark registration for the same product and activity for the manufacture and sale of shoes.
Assignment without goodwill
Here, the assignee may restrict the claimant to a product already used. This means that both Assignor & Assigned can use the same trademark but on different goods or services. For example, if the trademark “Ova” owner uses it for the manufacture and sale of shoes and decides to allocate it in good faith, it means that the trademark “Ova” can be used for any other product that covers the assigned trademark
Difference between Assignment of Trademark and Trademark licensing
In the case of a trademark assignment, there is a transfer of ownership of the trademark registration and in the case of licensing, the trademark ownership rights remain with the original owner, but some restricted rights to use the brand / trademark are granted to a third party.
Benefits of trademark assignment
Benefit from an already established brand
For those assigned, buying a pre-recognized brand will definitely benefit in terms of market base. In addition, those who devote a lot of money, time and effort to the creation and marketing of a brand are exempt. If the relevant mark is already registered, the recruiter is not required to pass the month-long registration process.
Expansion of business
Licensing is also one of the types of assignment through which the assigned, as well as the assigned, have the right to associate the brand with their respective business. Therefore, the collective efforts of all add value. Furthermore, with a partial assignment, the assignment business can be expanded by inviting more vendors to support brand building. In the case of Hawmore, the chairperson also believed that Lotte candy (assignor) was the right brand to take the company to the next level.
Through the assignment agreement, the brand owner will be able to unlock the brand value, up to this point, the value will only be on paper. On the other hand, Assigned is significantly better at entering the market with an already well-known brand, without building a new one entirely.
It is a valid proof
Even if there is case of the dispute related to the trademark, legal rights be easily established in the deed. The registrar has to ensure whether all the checks are in place by validating all the clauses in agreement and publishing it in the journal.
Procedure for trademark assignment agreement
The first step is to assign or assign an application for a trademark assignment or both. All details of the application transfer should be specified and prepared under FormTM-P.
Once the application is complete, file with the Registrar of Trademarks. This must be done within 6 months of obtaining ownership.
When there is a trademark assignment with a goodwill or registered trademark, the direction from the trademark registrar is mandatory (can be extended) before 6 months have elapsed.
The Registrar shall specify the statement of the trademark assignments. The applicant must then make the statement. A copy of the notice must be submitted along with a copy of the Registrar’s instructions.
Once the registrar is satisfied with all the documentation, he officially transfers the trademark from the original to the new owner. The name of the assigned means that the new owner must be registered as the new owner in the register. After this, the assignee may use the trademark registration in accordance with the terms of the agreement.