A trademark is a sign, symbol, word, or words registered or legalized for the use of representation of a company’s product or services. Hence, any tamper or illegal use of this trademark by any other company it does not belong to, gives the authorized company the right to legal action – making trademark of a company the most important feature of its existence.
As a trademark is owned, it can also be sold, transferred, etc., depending on the intention of the owner. The owner can transfer the trademark and its rights to anyone he wishes following legal procedures by way of assignment or licensing. The process of change in ownership of the registered trademark 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.
A trademark may be assigned to another owner in the following ways:
- Complete Assignment – When the trademark and its rights such as rights to further transfer, royalties, etc., are legally transferred to another entity, it is known as complete assignment of trademark.
- Partial Assignment – The transfer of ownership is restricted to certain products or services only and the owner of the trademark has the right to further transfer the trademark and earn its royalties. For example, a company X dealing in brands A, B and C, transfers the right of brand A to another company Y and retains the right to transfer the brand B and C – it is known as partial assignment.
- Assignment with goodwill – When the owner transfers the rights and royalties of the trademark associated with, while selling the product or service it owns, is known as assignment with goodwill.
- Assignment without goodwill – When the owner of the trademark restricts the new owner to use the trademark for the products he uses it for, implies that the goodwill associated with the product or service sold by the owner is not transferred to the new owner. Thus, the trademark in this case can be used by both seller and buyer but in different products and services.
In any case, the assignment or transfer of the trademark must be recorded with the Registrar of Trademarks.
There are two ways to record a trademark assignment:
- Assignment of unregistered trademark: Form TM-16 must be filled and requested for an unregistered trademark to be assigned or transferred.
- Assignment of a registered trademark: Form TM -23 or Form TM-24 must be filled and requested for any transfer or assignments of registered trademarks.
Advantages of a Trademark Assignment
- Marketing of the brand – As the trademark will already be known in the market, the marketing strategy can be rested or put least effort on.
- No burden of proof – The transfer of trademark will be recorded in the registry and hence already be a proof of your ownership to the trademark.
- Value and goodwill of trademark – If a trademark has a high value and goodwill in the market, it is a good choice to buy such a trademark to retain its privileges with the new buyer.
- Time saving – The time spent on a new trademark registration is much higher than the time spent on trademark assignment.
WHAT IS THE VALIDITY OF THE TRADEMARK?
A registered trademark is valid upto ten years, after which it may be extended by way of renewal process.
WHAT IS THE MOST IMPORTANT PART OF THE ASSIGNMENT DEED?
It is very important to mention in the assignment deed whether the assignment is along the goodwill or not.
WHAT ARE THE DOCUMENTS REQUIRED FOR ASSIGNMENT OF TRADEMARK?
The following documents are required for trademark assignment:
- Trademark assignment of contract
- Identified document of both seller and buyer
- Power of attorney
WHAT IS THE DURATION TO COMPLETE A TRADEMARK ASSIGNMENT?
It takes about six to ten months from filing an application for trademark assignment to getting the certificate of approval from the Registrar of Trademarks.