What is Trademark Assignment? Explained

Owner of the trademark has the right to sell, licence and transfer his or her trademark. The process of transferring a Trademark is possible only via a Trademark assignment agreement or Trademark licence. In this blog, we will discuss the term “Trademark assignment” and the various advantages of it. We will also discuss the types of Trademark assignment and the  requirements and process for trademark assignment.

Trademark assignment

The definition of the word Trademark assignment has been given under section 37 of The trademark act passed in 1999. According to the definition, a Trademark assignment refers to the transferring of the rights and  interests of the owner and the title in a Trademark and the brand mark.

We can simply say that, the process through which the ownership and the rights of a trademark are transferred to any other individual is known as a Trademark assignment.

The benefits of a Trademark assignment are listed below:

1. Trademark assignment allows the owner of The trademark to encash the brand's value.
2. A Trademark assignment also allows the assignee to acquire the rights of a brand which is already established.
3. A Trademark assignment also supports both the assignee and the assignor order to expand their concerned businesses.
4. If there is any sort of dispute, then the agreement of trademark assignment will allow the assignor or the assignee to establish a legal right.

Various types of Trademark assignment

Trademark assignments have been classified into four categories and are discussed afterward:

1. Partial assignment
2. Complete assignment
3. An assignment with goodwill
4. An assignment without goodwill a.k.a. gross assignment

Partial assignment

Under a partial assignment, only limited ownership of specific products or services is transferred by the assignor.

Complete assignment

In a complete assignment, the assignor transfers all the rights related to the registered trademark to the assignee.

An assignment with goodwill

Under an assignment with a goodwill, the assignor will transfer both the rights and the value of The trademark to the assignee.

Gross assignment a.k.a. an assignment without goodwill

Under a gross assignment, the assignor will restrict the rights of the buyer while transferring the trademark. Under this, the assignor does not transfer the goodwill which is attached with the brand to the assignee and restricts the buyer from utilising a brand of the product which the assignor already uses.

Requirements and process for Trademark assignment

The requirements for a Trademark assignment are listed below:

1. The assignment should be in written form.
2. The assignment must have two identifying parties that is an assignor who owns The trademark and an assignee who will buy The trademark.
3. The final must intend and give us consent for a Trademark assignment.
4. The assignment should be formed for proper and adequate consideration.
5. Documents required for a Trademark assignment are
   1.  An agreement of Trademark assignment
   2. A Trademark certificate
   3. An NOC from the assignee
   4. The documents that have been identified from the assignor and the assignee.

The process to apply for a Trademark assignment is given below:

1. The application for Trademark assignment is filed in form TM 24 or from TM 23. An assignor, assignee or both of them can file such an application.
2. File the form TM-P.
3. All the required documents related to The trademark assignment should be filed with the registrar of trademark. This should be done within 6 months from the date of proprietorship acquisition.
4. The advertisement of The trademark assignment will be specified by the registrar of The trademark.
5. On the basis of the specification of the registrar of trademark, the applicant will have to make an advertisement for The trademark assignment.
6. Then, the applicant will have to submit a copy of the advertisement along with the copy of the registrar's direction in the registrar's office.

The registrar will approve the application once he is satisfied and will register the assignee's name as the owner of The trademark.

Conclusion

In this blog, we discussed Trademark assignments and the various types of Trademark assignments. We also discussed the requirements and process for a Trademark assignment.