As we know Trademark is a part of Intellectual property and like the other properties i.e. land, building, machinery, the brand name of a business can be sold out or transferred or even can be given on the License by way of Trademark Assignment deed or with other legal documents. Such Transfer of Trademark is called the Trademark Assignment.
Trademark Assignment and Trademark Transmission is a legal procedure governed by sections 37 to 45 of the Trademarks Act,1999 with the rules 68 to 79 and defined under section 2(1)(b) and section 2(1)(zc).
Types of Trademark Assignment
There are 4 types of Trademark Assignment, which are as follows:
- Complete Assignment to another person
- Partial Assignment
- Assignment with Goodwill
- The assignment without Goodwill (Gross Assignment)
- Complete Assignment to another person: When the Owner of the Trademark transfers all the rights which are associated with the concerned Trademark to another person. For example Right to Re-Transfer, Right to Complete Sell, Right to get Royalty of Goodwill, etc.
- Partial Assignment: When the owner of a Trademark transfers some limited rights instead of all rights to another is called Partial Assignment.
- Assignment with Goodwill: When the Trademark owner transfers his Trademark with “rights and the value of the brand” which is calculated based on various factors, is called Assignment with Goodwill. For example “Dalda” is selling its name to someone by permitting the use of goodwill and in consideration takes a value amount for goodwill.
- The assignment without Goodwill: When the Trademark Owner transfers his Trademark rights to the buyer to use only for other products and not for the same products which are sold by the original owner. In the Assignment deed, the “restriction” is mentioned to use the brand name for those products which are sold by the original owner.
Documents Required for Trademark Assignment:
- Application Number of Trademark being Assigned
- ID & Address Proof of Seller (Assignor) and Buyer(Assignee)
- Consideration value and details of other rights & restrictions
- Any other details may require while drafting the deed.
Procedure For Trademark Assignment:
- Drafting of Assignment Deed: based on details provided by the Trademark Owner (Assignor) and Buyer (Assignee), an Assignment Deed has to be drafted with due care by mentioning all the Terms and Conditions associated with both the parties. The Parties have to pay adequate stamp duty, which shall not be less than @ 5% of consideration value, and get notarized.
- Preparation of Assignment Trademark Form (TM-P): After completion of Drafting of Assignment Deed, the next stage is to Preparation of Assignment Trademark Form (TM-P) which the form shall contain all the annexures as attachments.
- Filing of Form at Trademark Authority: After completing all the work, the file has to be submitted with Trademark Authority within 3 months from the date of execution of the Trademark Assignment Deed.
- Changing of Owner Name in the Trademark Register: When the Registrar of Trademarks is satisfied with all the documents submitted before him, he will assign the Trademark to the buyer.