Skip to Content

Trademark Assignment


Submit

Just as physical assets like property or vehicles can be transferred to new owners, trademarks can also be reassigned through a legal process known as assignment. This process involves a thorough transfer of all rights, interests, and benefits associated with a trademark from one party to another. When a trademark is assigned, the current owner, referred to as the assignor, relinquishes their legal rights, ownership, and control over the trademark. 

These rights are then fully transferred to the new owner, known as the assignee, who gains the ability to utilize, enforce, and capitalize on the trademark as though it were their own. This comprehensive transfer process ensures that the new owner can fully benefit from the trademark’s brand recognition, reputation, and any associated business value.

According to the Trade Marks Act, 1999, only the registered proprietor of a trademark has the authority to transfer it. This process can involve both registered and unregistered trademarks, with or without the associated goodwill of the business.

Types of Trademark Assignments:

  1. Complete Assignment
    This involves transferring all rights and interests in the trademark to another party. For instance, if X transfers their brand ‘ABC’ entirely to Y, X will no longer have any rights to ‘ABC’.
  2. Partial Assignment
    Here, the trademark is transferred only for specific goods or services. For example, if X owns ‘ABC’ for sauces and dairy products, they can assign the rights for dairy products to Y while retaining rights for sauces.
  3. Assignment with Goodwill
    This includes transferring not only the trademark but also the goodwill associated with it. For instance, if X assigns their brand ‘Sherry’ to Y with goodwill, Y can use ‘Sherry’ for various products, not just those previously associated with X.
  4. Assignment without Goodwill
    In this case, the trademark is transferred without the associated business goodwill. For example, if X assigns ‘Sherry’ without goodwill, Y can use it for different products than those X used it for.

  • The assignment must be documented in writing.
  • It should clearly identify the assignor (current owner) and the assignee (new owner).
  • The assignor must consent to the transfer and receive appropriate compensation.
  • The trademark assignment agreement should outline specific terms and conditions.

Trademark Assignment Agreement:

A formal agreement is crucial for the assignment process. It should include:

  • The impact of the agreement on the trademark rights.
  • Whether the assignment includes goodwill.
  • The purpose and scope of the assignment.
  • Geographic restrictions and legal obligations.
  • Signatures and notarization as required.

Execute the Assignment Agreement
The assignor and assignee finalize the terms through an agreement.

File with the Registrar
Submit the assignment application using Form TM-P to the trademark registrar within six months. Late submissions may incur additional fees.

Advertisement and Registration
The assignment must be advertised as directed by the registrar. Once approved, the registrar will update the records to reflect the new ownership.

Trademark assignment agreement

Trademark certificate

NOC from the assignor

Identification documents of both parties

Parallel Use Restriction: Prevents assigning a trademark that could lead to confusion or deception by multiple parties using the same or similar marks for related products or services.

Multiple Territorial Use Restriction: Ensures that trademarks are not assigned to create exclusive rights in different territories within India for similar products or services.

Allows the assignor to capitalize on their brand value.

Provides the assignee with an established brand reputation.

Facilitates business expansion for both parties involved.

Explore Our Latest Blogs

Your Dynamic Snippet will be displayed here... This message is displayed because you did not provided both a filter and a template to use.

1000+ satisfied clients who trust us to enhance their financial wealth through expert tax planning and optimization.

 Join and elevate your tax strategy today.

Contact us