The Trade Marks Act, 1999 (“Act”) gives the owner of a trademark the power to transfer ownership of their trademark to any person and receive consideration for such assignment. This power extends to registered and unregistered trademarks.
What are the different types of assignments of trademarks?
The Act envisages four different types of assignments of trademarks, which are as follows:
- Complete assignment of trademarks:
In a complete assignment, the assignor transfers all the rights with respect to the trademark to the assignee, who will be considered the owner of the trademark assigned. This includes the right to further assign the trademark.
- Partial assignment of trademarks:
In a partial assignment, the assignor transfers limited rights over the trademark, restricted to particular goods or services for which the trademark is registered. This type of assignment is only possible for registered trademarks.
- Assignment of trademarks with goodwill:
In an assignment of a trademark with goodwill, the assignor transfers all the rights in the trademark to the assignee for using the mark in relation to the goods and services for which the assignor is already using the trademark.
- Assignment of trademarks without goodwill:
In an assignment of a trademark without goodwill, the assignor only transfers the rights in the trademark to the assignee and not the goodwill associated with goods and services for which the assignor has been using the trademark.
What is the process involved to record the assignment of trademarks?
The Assignor and Assignee should enter into a trademark assignment agreement, a copy of which is to be filed along with an application before the Trade Marks Registry to record the name of the new proprietor/ applicant, as the case will be.
For registered trademarks, an application has to be made in Form TM-P to register the title of the person who becomes the proprietor of a registered trademark by assignment. For unregistered trademarks, the application to assign the trademark is to be made in Form TM-M. These forms have to be filed along with the applicable fees.
What do you need to include in a trademark assignment agreement?
Below are a few points that must be kept in mind whilst drafting a trademark assignment agreement:
- The agreement must be in writing.
- The names of the parties, that is the assignor and assignee should be clearly mentioned in the agreement.
- The trademarks being assigned (along with and the application/ registration numbers and other details) should be clearly mentioned in the agreement.
- The territorial extent of the assignment should be clearly specified in the agreement.
- The execution date and the date from which the assignment is to be effective should be mentioned in the agreement.
- The consideration amount to be paid to the assignor by the assignee should be specifically mentioned in the agreement.
- The agreement must specify if the assignment of trademark(s) is complete or partial.
- The agreement should specify whether the assignment is being made with goodwill or without.