Last updated: February 11th, 2023 6:23 PM

Trademark assignment

Like any other property/ asset, the owner of the trademark (i.e., the assignor) has the right to sell, license, or transfer the same. The transfer of trademark is possible through the Trademark Assignment Agreement or Trademark Licensing. The current article explains the term trademark assignment along with its advantage, types of trademark assignment, pre-requisites, and procedure of trademark assignment.

Understanding the term trademark assignment 

The term trademark assignment is defined under section 37 of the Trademark Act, 1999. As per the definition, the trademark assignment means transferring the owner’s right, interest, and title in a trademark and a brand mark. In simple words, the process of transferring the right and ownership of the trademark to any other person is known as a trademark assignment. Some of the advantages of the trademark assignment (concerning both the owner and the buyer) are listed hereunder-

• The trademark assignment enables the owner of the trademark to encash the value of his brand.
• With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
• The assignment of the trademark supports both the assignor and the assignee to expand their respective business.
• In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.

Types of trademark assignment

There are four types of trademark assignments-

1. Partial assignment,
2. Complete assignment,
3. An assignment with Goodwill, and
4. An assignment without Goodwill/ Gross assignment.

All the four types of trademark assignments are briefly explained hereunder-

1. Partial assignment-

Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.

2. Complete assignment-

Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.

3. An assignment with Goodwill-

Under ‘assignment with Goodwill’, the assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.

4. Gross assignment or Assignment without Goodwill-

Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Pre-requisites and procedure for trademark assignment

The list of pre-requisites for the trademark assignment is-

• The trademark assignment must be in writing.
• The assignment must have the following two identifying parties-
  • An assignor (owner of the trademark); and
  • An assignee (buyer of the trademark).
• The assignor must have the intention and consent for the trademark assignment.
• The trademark assignment must be for proper adequate consideration.
• Following is the list of documents required for trademark assignment-
  • Trademark assignment agreement,
  • Trademark certificate,
  • NOC from the assignor,
  • Identified documents from the assignor and assignee.

The procedure for applying for a trademark assignment is narrated hereunder-

1. Filing an application for trademark assignment in Form TM-24 or Form TM-23 (in case of joint request). Such an application can be filed by either the assignor or the assignee or both.
2. Filing of Form TM-P.
3. Filing of all the requisite documents relating to trademark assignment with the Registrar of the trademark. The filing needs to be done within a period of six months from the date of acquisition of proprietorship.
4. The registrar of the trademark will specify the advertisement of the trademark assignment.
5. Based on the registrar’s specification, the applicant is required to make an advertisement for the trademark assignment.
6. The applicant is required to submit the copy of the advertisement and copy of the registrar’s direction in the office of the registrar.

On being satisfied, the registrar will approve the application. Accordingly, the registrar will register the name of the assignee as the proprietor of the trademark.