Defining the trademark assignment
As with any form of property, the owner has the right to sell, transfer, and license owned property. The same goes with the trademark as intellectual property. This type of transfer can be done via a trademark assignment agreement or via licensing. While allocating the trademark, there is a change in the propriety of the registered brand.
But when it is licensed, post trademark rights continue to be in the original owner’s hands, while only a few confined rights are allocated for use to brand/mark are given to the third party. Such types of assignments must be done when you register a private limited company to transfer the brand’s goodwill to the business. Assignment needed to be recorded in the register of trademarks in case of a registered trademark. This can be applied to a registered private limited company as well.
Advantages of assignment of the trademark in India
– To obtain your trademark’s value
It requires a lot of time, work, and money in brand creation. With the help of India’s assignments, trademark owners might desire to encash the value of a brand that would now only prevail on paper. This combination of efforts creates more value, and the assignor might put suitable restrictions.
●Agreement of assignment is valid proof
If any dispute arises in terms of trademark, then the assignee’s legal prerogatives can be set up easily via trademark assignment agreement. Registry assures that all the checks are in place by scrutinizing all mentioned clauses’ validity in agreement with the publication of assignment in trademarks journal.
●Advanced existing brand name
The assignee will have the edge over dealing with already established and existing brand names. Assignee’s time, efforts, and money will be saved in creating a brand name. It can also use the ‘TM’ trademark mark of the brand. Without applying for the ‘TM’ registration in the first place.
●Expanding the business.
While licensing, the assignor’s business enhances more vendors partake in contributing to the brand building. This brand value would provide thrust with combined efforts of assignor and assignee.
Various types of trademark assignments in India
Complete assignment.
All the owner’s rights will be vested in a trademark are assigned to a third party, with the inclusion of the right to earn loyalty, license and further transfer, etc.
Goodwill attached with the assignment.
In such a case, attached values and rights will also be transferred. This would allow the new owner of the trademark to use the assigned brand name concerning the product and service already sold beneath the brand name. Additionally, it can use the obtained trademark for any new product or venture the new proprietor creates or manufactures.
Assignments are restricted to only some goods and services.
Under this assignment, ownership transfer is restrained only to certain services and products mentioned in the trademark assignment agreement.
The assignment without goodwill.
It is also known as a gross assignment, the brand owner can restrict the buyer’s right, not allowing the new buyer to use the brand for products and services being used. Hence, a product already being sold with such goodwill attached to the brand will not be transferred to the buyer.
Limitations on the assignment of the registered trademark
●Assignment creates prerogatives for more than one individual in terms of the same services and goods will not be permitted.
●Concurrent use of allocated marks by various individuals in different parts of the country is not allowed.
Process of assignment of the trademark in India.
In India, it is known as a trademark assignment document entered between the parties involved being assignee and assignor. With the execution of the trademark agreement, the online procedure of tm registration takes place. This application is submitted with the registry in the given form with the assistance of a registered trademark attorney and payment of fees.
Allocating an unregistered trademark in India
Trademark as an asset can be transferred from one owner to another. Such type transfer takes place in the form of assignment or amalgamation or merger betwixt two entities. An unregistered trademark can also be allocated, with or without goodwill, by applying with the registry.
Things to keep in mind concerning the assignment deed
Deed of trademark assignment must be performed after stamp duty payment, as mentioned in the concerned state government. The rate of stamp duty has to be computed based on consideration agreed by the parties. Along with that effective date of assignment must be explicitly provided.
The time required for trademark assignment in India
It usually takes 6-8 months to update the data of transfer by trademark registry in India. Nonetheless, where the effective transfer date is explicitly provided in the trademark assignment document, for instance, assignment deed, bestowed rights will be exercised by transferee from said date.
Government payment of fees.
The registry has mentioned RS. 9000 as a payable fee for applying transfer ownership, such as trademark assignment in India for registered private limited company.
Conclusion
The pre-requisites mentioned above and things would help you to transfer trademark assignment in India. As aforementioned, it would save the time, money, and energy of the assignee. They can use the benefits without putting many efforts in the first place, such as using the ‘TM’ trademark for the brand without going through the process of acquiring it. This can be used by any form of business that has obtained the trademark registration and sells under the same brand name and logo, such as a registered private limited company in India or LLP.
