- 9414883452
- contact@submitreturn.com
A trademark is an intellectual property asset that its owner can sell, license, or transfer. This transfer is done either through a Trademark Assignment Agreement or Licensing.
In a trademark assignment, ownership of the registered brand changes hands. In contrast, licensing allows the original owner to retain ownership while granting limited rights to a third party. Assignments can occur with or without transferring business goodwill. For registered trademarks, such assignments must be recorded in the Trademark Register.
Building a brand requires significant investment of time, money, and effort. Through trademark assignment in India, owners can monetize the value of their brand, which previously existed only on paper. The collaborative efforts enhance the brand’s worth, and the assignor can set suitable restrictions as needed.
In trademark disputes, the assignee’s legal rights are clearly established through the trademark assignment agreement. The Registry verifies the agreement’s validity by reviewing its clauses and publishes the assignment in the Trade Marks Journal.
The assignee benefits from acquiring an established brand, saving time, effort, and investment needed to build brand value from scratch.
In licensing, the assignor’s business grows as more vendors participate in brand building.
The combined efforts of the assignor and licensee help boost the brand’s value.
Certificate of Trademark Registration (if any)
No Objection Certificate from the original owner of the registered trademark
All trademark rights are transferred to the third party, including the rights to assign, earn royalties, license, and more.
In this type of assignment, ownership transfer is limited to specific products or services as outlined in the Trademark Assignment Agreement.
In this case, both the value and rights of the trademark are transferred to the new owner.
This allows the new owner to use the assigned brand name for existing products and services, as well as for any new ventures or products they develop.
Also called Gross Assignment, this type of transfer restricts the assignee’s rights, limiting their use of the brand name.
The assignee is prohibited from using the brand for products already marketed by the assignor, meaning the goodwill associated with those products is not transferred.
Assignments that create exclusive rights for more than one person with respect to the same goods or services are not permitted.
Simultaneous use of assigned marks by different individuals in different parts of the country is not permitted.
The assignment process involves drafting an assignment agreement, collecting required documents, and filing the TM-P form with the Trademark Registry. The Registry then reviews the application and updates the ownership record upon approval.
Yes, both registered and unregistered trademarks can be assigned. However, in the case of an unregistered trademark, the assignment is only valid after public notice and proper documentation to protect the rights of both parties.
Ensure that the Assignment Deed clearly mentions the scope of rights transferred, whether goodwill is included, any territorial restrictions, and the effective date. It should also be signed and notarized appropriately.
The Registry typically takes 2 to 4 months to review and approve a trademark assignment, depending on the completeness of the application and supporting documents.
The government fee for filing a trademark assignment (Form TM-P) is ₹9,000 per mark per class if filed physically and ₹4,500 if filed online. Concessions may apply for startups and MSMEs.
The owner of the Trademark can provide rights of using the Trademark without transfer of ownership. This is called Partial transfer of Trademark or Licensing of Trademark in India. To affect the said transfer of rights, an Agreement is to be executed by providing all the terms and conditions along with covenants as agreed by the Parties.
Liquidate your brand’s value through Trademark Assignment