In recent years, trademark registration in India has seen a huge boom. During the past 4 years, the number of trademarks registered in India were equal to the past 75 years. Until 2015, India had approximately 11.9 lakh trademarks. While in 2020, registered trademark in India jumped to a humungous 23.52 lakh trademarks, am enormous addition of 11.61 lakhs.
As trademark registrations are rising, trademark transfers/assignments are also on a steady rise. Today, this article will explain the complete process of how to change the owner of a trademark. So, keep reading to understand the trademark transfer process step by step
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Before understanding the trademark transfer process, let us see what is a trademark?
What is a trademark?
A trademark is a form of intellectual property that provides the trademark complete right to use the registered trademark. Just like physical property, the trademark is also the property of its owner. Out of the whole bunch of rights that a trademark offers, an important one is the right to transfer the trademark. Every trademark owner has the right to transfer their trademark by trademark licensing or trademark assignment. The Trademark Act, 1999 regulated the process of trademark registration, trademark licensing, and trademark transfer in India.
What is Trademark Assignment or Trademark Transfer?
Trademark assignment means the process by which transfer of ownership and rights of a trademark takes place. According to Section 37 of the Trademark Act, 1999, “the trademark transfer is defined as the transfer of an owner’s right, title, and interest in a trademark or brand mark.
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Types of Trademark Assignment
Here are four ways to transfer a trademark:
|Type of Trademark Transfer||Meaning||Example|
|Complete assignment of logos||In a complete trademark assignment, the trademark owner transfers complete with relation to the trademark to the second party. Thus, trademark rights such as the right to any transfer, earning royalties, etc., are assigned to the receiving party.||An owner of a company ‘PQR’, completely sells his complete trademark through an agreement to B. After this, there are no rights with A concerning that trademark of that company.|
|Partial assignment of logos||In partial trademark assignment, the transfer of trademark rights and possession is limited to only particular products or services. In such a case, the trademark owner could still have the right to perform any transfer as well as to earn royalties, etc.||For example, A, owner of a stationery firm, assigns proprietary rights only with relation to the notebooks whole and still has the rights over other products.|
|Assignment with goodwill||In this type of trademark assignment, the trademark owner assigns the rights and price of the trademark related to the merchandise he/she sells. Thus, the owner is transferring the rights of the trademark along with the trademark value. Here, in the case of trademark transfer with goodwill, the second party receives the rights and values of the trademark. Now, the second party can use the proposed trademark in link to the products and services.||Suppose the owner of a brand Cadbury sells his brand to A. As Cadbury deals with chocolates, A will get the right to use the brand name with respect to the chocolate products and other products which it produces.|
|Assignment without goodwill||In this type of assignment, the owner puts a limit on the receiver to use a trademark for the merchandise he uses it for. In simple terms, the goodwill attached to the owner’s whole concerning the products already being sold out under such a whole will not be transferred to the second party. This means that both the party and receiver will use an equivalent trademark but for different products. Thus, the goodwill is not transferred to the buyer.||For example, if the trademark owner of AMUL (dairy products) decides to transfer the trademark to a second party without goodwill, then the second party has the right to use the trademark for products different from the dairy products.|
After the trademark allotment, it is necessary to record the transfer of possession in the Trademark registration.
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How do I change the owner of a trademark?
Trademark assignment can take place only after the execution of an agreement known as a Trademark Assignment Agreement. If a partial assignment of a trademark takes place, then the process is known as trademark licensing. If a trademark is registered, then it can be assigned by following the due process:
- First of all, an application for trademark Assignment needs to be made at the Trademark office. Either or both of the Assignor or Assignee can file the trademark transfer application.
- Then submit a TM-P along with the requisite details (Brand Name, Application Number, Class Number Current Status (Active or not), and fee.
- After TM-P form filling, the next step is to submit the documents necessary for the Trademark assignment to the Registrar of the Trademark. Also, the maximum time limit for submission of documents is 6 months starting from the date of acquisition of proprietorship.
- In the next step, the application undergoes processing at the Registrar’s office.
- Next up, the applicant needs to advertise the assignment as suggested by the Registrar. Moreover, you need to submit a copy of the Registrar’s direction along with the assignment advertisement.
- Now, the Registrar approves the assignment application only after he is sure after proper checking. Thereafter, the registrar will register the assignee as the trademark and submit the details of the assignment in the records.
How to Prepare an Assignment Agreement or Application
Under the Trademarks Act, an assignment of a trademark is possible only after an agreement in writing between the parties concerned. Hence, the assignor, as well as the assignee of the trademark, needs to execute a legal document for trademark transfer. Here are some tips for assignment agreement:
- Mentioning requisite details such as brand name, application number, class number, and the current status is mandatory.
- Delineating legal titles: The agreement’s operative part of the agreement should state that the person transferring the trademark is the lawful owner of it with the right to transfer. Moreover, the agreement should mention that the assignor (himself or his power of attorney holder) has complete right, absolute power, as well as lawful authority to sell or transfer the trademark.
- Consideration: The consideration portion includes the amount paid by the assignee to the assignor for the transfer. This is because the payment receipt establishes that trademark rights, title and interests have an allowance.
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