Trademark is a kind of Intellectual property which protects the name, symbol, logo, nouns etc. It is considered as a physical property like any other property the owner of the and has the right to sell, transfer his property and the same he can do with his Intellectual property. Every brand or Trademark owner has full right to sell or transfer their Trademark by way of licensing or Trademark assignment. Trademark Act, 1999 deals with licensing of Trademark and Trademark assignment.

Trademark assignment is the part of Transfer of ownership of Trademark from one person to another person. The process of change on ownership of the registered mark is known as Trademark assignment. Whereas in Trademark licensing, there is no change in the owner but a few restricted rights to use the Trademark are given to a third party.

Further assignment of Trademark usually takes place through an agreement between the parties which is known as Trademark assignment agreement. Assignment agreement is legally valid when the intention of the assignor is in good faith.

Complete Assignment

In complete assignment, complete rights related to the owner of the trademark is transferred to the other party. The owner here transfers all the rights with respect to marking to the other party, which includes rights of further transfer, to earn royalties etc. For example. A has transferred his rights to B through a Trademark assignment agreement. Now, A does not retain any rights with respect to the mark.

Partial Assignment

In case of Partial assignment, transfer of ownership is limited to certain services/ products as parties have decided or expressed in Trademark assignment agreement. For example- A proprietor of a brand used for Jams and jellies, and dairy products. A assigned the right in the brand related to jellies only to R and retained the rights with respect to Jams and dairy products with him. Further a complete or partial assignment can be made with goodwill or without goodwill.

Assignment with Goodwill

Such assignments are made when value and right, both the things associated with the trademark are transferred to the third entity with goodwill. For Example, R, the proprietor of a brand “Shudh” relating to shoe products, sells his brand to S such that S will be able to use the brand “Shudh” with respect to dairy products as well as any other products it manufactures.

Assignment without Goodwill

Assignment without goodwill is also known as gross assignment. Here the owner of the brand restricts the right of the buyer. The buyer cannot use such a brand for a product being used by the original owner. Hence, the goodwill attached to such a brand with respect to the product already being sold under such a brand is not transferred to the buyer. For Example; P, the proprietor of a brand “Shudh” relating to dairy products, sells his brand to Q such that Q will not be able to use the mark “Shudh” with respect to dairy products but can use this brand for any other products being manufactured by it. In such a case, the goodwill which is associated with brand “Shudh” for dairy products is not transferred to Q, and Q will be required to create distinct goodwill of brand “Shudh” for any other product or service like Restaurant wherein Q proposes to use this brand.

• Trademark Act its restriction over assignment of a mark to more than one person with respect to the same goods and services, or for same depiction of goods and services or such goods and services are associated with each other.
• Restriction over use of the mark where assignment of the mark results in different people using the mark in different parts of the country.
• Restriction on assignment that results in different people using the trademark in different parts of the country together.

The concept of Trademark licensing allows usage of a trademark by another person without the transfer of the ownership associated with the mark. The Trademark act doesn't talk about the term “License” whereas the term used in the Act is “Registered user”.

Trademark assignment is beneficial for both the parties. While the licensor relishes the right to the mark by getting royalties, the licensee becomes competent to expand its market operations by using the brand and developing its name.

Following are the benefits of Trademark assignment-

• Get Your Trademark’s Value- A brand name is recognized when a lot of hard earned money, hard work is invested in it. By assignment of trademark to other entities, owners can encash the value of the brand, which was till now only on papers.
• Assignment Agreement is the valid proof- In case any dispute arises with respect to the trademark, the legal rights of the assignee can be established easily through Trademark assignment agreement. Registry assures that all the checks are in place, and the validity of the entire clause mentioned in the agreement is published in trademark journals.
• Pre-Established Brand- Assignee enjoys the benefit of pre established brand. The Time, effort, and investment for making the brand value are saved for the assignee.

• Trademark certificate
• For Trademark assignment, details of of the parties is required
• NOC of the assignor or licensor is required
• Assignment deed
• Affidavit of the assignor

• Assignment/ licensing of a Trademark must be in writing
• Identifying the parties as assignor and assignee
• Identification of a trademark to be assigned along with the relevant applications and registrations.
• Be given for consideration
• Identify the date of assignment
• Duly executed agreement
• Include the transfer of trademark in goodwill

Assignment of unregistered Trademark

According to section 39 of the Trademarks Act, 1999, “Any unregistered Trademark can be further allotted or transmitted with or without the goodwill. One can make an appeal for the same under form TM-16.”

Assignment of a Registered Mark

According to action 38 of the Trademarks Act, 1999, “Trademarks can be assigned in part with or without goodwill. All the assignments can be made on form 23 or 24 of the Trademark.”

Following are the procedures for Trademark assignment agreement-

• First step is to file the form for assignment of Trademark. The plea can be made either by the assignee or assignor or by both. Furnish lla the required details mentioned under form TM-P.
• After completing the form, the same is required to be submitted with the registrar of the Trademark. It is required to be done within 6 months of acquisition of proprietorship.
• The direction of the registrar is mandatory before the expiry of 6 months in case the trademark assignment is done with goodwill or of a registered mark.
• Regisarra will specify the advertisement of trademark assignment. Applicants are required to submit the copy of the advertisement and registrar direction in the office of registrar.
• Once the registrar is satisfied with the documents submitted, he shall oficialay transfer the trademark from original owner to the new owner.

Name of the assignee is entered in the register of trademark. After entry of the name in trademark register, the assignee is eligible to use the trademark as per the terms of the agreement.

Therefore, Trademark assignment of a brand can open many opportunities with proper planning. It allows third parties to have access over the right of the real owner of the brand. With the assignment, the brand remains alive and both assignor and assignee avail various benefits. One of the famous examples of trademark assignment is Havmor ice cream who transfers its right partially to Lotte confectionery worth Rs. 1020 crores.

We, at BIAT legal LLP provide end to end solutions for Trademark Assignment. Our services include:

• Collection of information and starting the process
• Drafting the application
• Reviewing the draft and making changes if necessary
• Filing the application

BIAt legal LLP is a leading legal consultancy firm providing the comprehensive services relating to Trademark Assignment.

Contact us now if you seek to assign your trademark to someone else.