Just like the transfer of shares or tangible assets of the company, the company’s trademark can also be transferred completely or partially to another person.
Meaning of assignment of the trademark
Assignment of a trademark is a transfer or sale of the logo, brand name ownership from the original owner to another owner with or without transfer of goodwill. It is a written document that relates to the transfer of ownership rights according to the Trademark Act, 1999.
The owner who transfers the title is called an assignor and who receives the tile is called an assignee.
Advantages of assignment of the trademark
- The person who assigns his trademark will be able to encash his brand name.
- It is beneficial for buyers of trademark, as it is already established and it has popularity.
- Assignment of trademark helps in the expansion of business. These are the benefits included in the assignment of the trademark.
Assignment of a trademark can be made in 4 different ways such as,
- The assignor can transfer some part of the ownership to the assignee on limited products is called a partial assignment.
- The assignor can transfer complete ownership to the assignee and this is called a complete assignment.
- The owner will transfer the title of the brand name as well as the value of the trademark, this is called a trademark with goodwill.
- Here the assignor will transfer the trademark by restricting buyers' rights by not transferring goodwill, this is called a trademark assignment without goodwill.
So these are the types of assignments of the trademark which can be made at the time of transfer of ownership.
Process for assignment of the trademark
In order to transfer ownership of the trademark, there are some procedures to be followed such as,
- The first step is to file for assignment of trademark either by owner or receiver or even both by filling up form TM – P with all the necessary information.
- Then you must file forms 23 and 24 in order to register your assignment of a trademark with the registry.
- The application form must be filed with the registrar of the trademark.
- This process must be completed within 6 months of proprietorship acquisition.
- Advertisement of trademark assignment must be specified by the registrar.
- A copy of the advertisement of the assignment of trade is to be submitted to the registrar.
- After verifying all the documents, the registrar will transfer the ownership of the trademark to the assignee.
Documents required for assignment of ownership
The assignment of a trademark should be in written form.
- The Trademark Certificate.
- The assignor should submit a no-objection certificate (NOC).
- Other related documents from assignor and assignee.
Is there any restriction on the assignment of the trademark?
YES! The trademark act puts certain restrictions on the assignment of trademark such as,
- It is restricted that for more than one person the transfer of ownership cannot be made.
- It is also restricted that different people cannot use the same brand name in different countries at the same time.
So these are restrictions that are put on the assignment of the trademark.
Assignment of unregistered trademark
YES, an unregistered trademark can also be assigned with or without goodwill by filing form TM – 16.
What is the prescribed fee for the application of the assignment of the trademark?
The fee prescribed by the government of India for the assignment of a trademark is Rs.9000.