Trademark Assignment

Overview of Trademark Assignment

Assignment means transfer and Trademark Assignment is a method of transferring the ownership and proprietary rights of the trademark to a 3rd party with or without the goodwill of the business. It is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party ("assignor") transfers to the receiving party ("assignee") its property rights in the mark.

As we all know that trademark is intellectual property belonging to the owner, as other property are often sold for price so in the similar approach a trademark can be sold for price.

Usually, Trademark Assignment is initiated when the entire business is sold off, or the company owns many trademarks for brands, and wanted to sell a few of them.

It takes about six to ten months from filing an application for trademark assignment for getting of approval from the Registrar of Trademarks.

Trademark Assignment Deed

As for selling of any property being car or house etc. , a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

Important points to be included in trademark assignment deed:

• The most important clause to be included in Trademark Assignment Deed is Selling Price or Consideration for which transfer is made and stamp duty is calculated on the same consideration.
• Geographical area in which assignee or purchaser can use the brand name
• Details for whether transfer is with Goodwill or without Goodwill

Types of Assignment

A trademark can be assigned in the following different ways:
• Complete Assignment
• Partial Assignment
• Assignment with Goodwill
• Assignment without Goodwill

• Complete Assignment – When all the rights vested in a trademark including rights to further transfer, royalties, etc., are legally granted to another entity/person is known as complete assignment of trademark.
• Partial Assignment – Under the partial assignment there are certain restrictions on the transfer of ownership to certain products or services only and the owner of the trademark has the right to further transfer the trademark and earn its royalties.
  o For example-A, owner of a tea and a biscuit brand, transfers proprietary rights only related to the tea brand and retains the rights to transfer over the biscuit brand. It is known as partial assignment.
• Assignment with goodwill – When the owner transfers all the rights and royalties of the trademark related to all product or service which are owns by owner, is known as assignment with goodwill.
• Assignment without goodwill – when both the parties i.e. seller and buyer can use a same trademark but for different products or services. Owner of trademark does not allow the assignee to trade in the products in which he used to.

In any of the above cases, the assignment or transfer of the trademark must be recorded with the Registrar of Trademarks.

Document Required for Trademark Assignment

In regard to the Trademark Assignment, following documents are needed:

• Assignment Deed
• Affidavit of the Assignor
• ID Proof of the Assignor & Assignee

Assignment of Registered & Unregistered Trademark

• Assignment of registered trademark: Registered Trademark can be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.
• Assignment of a unregistered trademark: Unregistered trade mark may be assigned or transmitted with or without the goodwill & the ownership of the trademark can be transferred during the examination of the trademark application.

Advantages of Trademark Assignment

• Every assignment of trademark is entered in the records of registry and hence already is a proof of ownership to the trademark.
• Trademark assignment takes lesser time than to register a new brand name.
• During a Trademark Assignment, both the parties are in advantageous position as the assignor gets a good amount for brand name and the assignee will enjoy the already established brand which is known in the market.

Difference between Trademark Licensing & Trademark Assignment

• Licensing and Assignment of trademark are seem to be same but there is lot of difference between two.
• Trademark assignment is a selling of trademark or transfer of an owner’s rights, title, and interest in a trademark or service mark to others and it makes in change of ownership. Whereas, in trademark licensing, few restricted rights are granted to use the trademark with no change in the ownership are given to a third party and licensing of trademark is a permission given to use the brand name for limited period of time.

Limitation For Trademark Assignment

A trademark can be jointly owned by multiple or more than one applicant but there is a restriction on trademark assignment is that Trademark cannot be assigned if the exclusive rights of the trademark vests in more than one person.