Trademark Assignment: A Complete Guide
Trademark is an important asset which helps one to secure and protect words, slogans, logos, headline, color and shape of products and more. Process of seeking trademark is important yet a crucial procedure. Steps such as filing of application, trademark search, objection raised by the opposition and public and more shall be done in a proper manner. After all the process is done then the trademark is assigned to the appropriate owner.
In this blog we will discuss about the concept of trademark assignment, its procedure, elements, and other requirements which are required.
Trademark Assignment
The concept of trademark assignment can be understood when we split the two words. Trademark is a concept under IP which helps individuals and companies to protect their brand identity and reputation by protecting their exclusive rights of using words, slogans, marks, shape and color and more. Assignment means to provide or give something.
Together, if we merge these two words we can understand the meaning of trademark assignment. It means legal transfer of ownership rights from one person to another. This is governed under Trademark Act, 1999. Provisions regarding assignment of trademark has been mentioned under chapter - V of Trademark Act,1999 which speaks about forms, process and transmission of trademark in India.
Need of Trademark Assignment
- Legal transfer of ownership
- Maintaining brand value
- Easy business restructuring
- Protection against disputes
- Recognition of new owner
Types of Trademark Assignment
- Complete assignment: The trademark rights such as usage, license are transferred to the assignee.
- Partial assignment: Only specific goods or services are transferred to the assignee while remaining goods and services and their rights is used by the assignor.
- Assignment without goodwill: When the trademark is transferred without transferring of goodwill of business. Here, some restrictions are there regarding mark usage by the assignee.
- Assignment with goodwill: In this trademark is transferred with goodwill of business.
Agreement of Trademark Assignment
Agreement acts as a legal evidence when there is transfer of ownership is done between two or more person.
Typically, an agreement under Trademark consists of details such as details about assignor and assignee, trademark details such as registration, application number, amount or fees required, obligations and rights of both the parties. Date of transfer is utmost important as it is beneficial in future and can act as an evidence if needed.
Process of Trademark Assignment
There are certain steps which needs to be followed while process of trademark assignment has been initiated.
- Draft the agreement for assignment: Agreement deed shall be signed by both the parties.
- Fill the requisite form: The parties must fill form TM-P with trademark registry.
- Submit supporting documents: Supporting documents such as assignment deed, identity proof, power of attorney (if applicable).
- Examination by Registrar: Registrar examines the application and may raise objections.
- Registration and update: After approval granted by the Registrar the trademark ownership is updated in the journal.
Time Period, Required Fees and Other Checklist
Normally fees required is Rs. 10,000 for physical mode while for online mode it is Rs. 9,000. This includes government fees only and professional experts fees (if any) is not included.
The time period for trademark assignment generally requires application filing within 6 months from date of assignment. Extension till 1 year is allowed provided that extra fees has been paid.
Parties such as trademark owner, applicant of pending trademark, legal heir of trademark or others can assign trademark in India. While assigning the trademark may or may not be registered.
Consequences of Non-Trademark Assignment
There can be different consequences for different people.
- Lack of legal protection: If there is no assignment done then it is difficult to take legal action against infringers.
- Lack of control: Trademark assignment is important and if it is not registered then the party (assignor) may lose their control over trademark.
- Challenges: Lack of trademark assignment can create problems for both the parties which can lead to legal disputes and loss of reputation and identity.
- Misleading information: As assignment defines the legally authorized owner non-assignment of trademark can lead to misleading as there will be no fixed legal owner of the said trademark.
Conclusion
Trademark assignment is a small but a crucial process while determining the legal ownership of the trademark. Before assignment of trademark, all the requisites such as fees, documents shall be arranged together and submitted in the specific time provided. If needed, renewal can be done for next 10 years after expiration of the trademark done previously. Renewal helps to maintain trademark in the trademark journal or register which marks its relevance in assignment of trademark.