Trademark Assignment
A trademark assignment involves transferring the ownership rights of a trademark from one party (assignor) to another party (assignee). This allows the assignee to use the established brand identity of the trademark for their products or services.
Key Points About Trademark Assignment in India:
Assignability: Trademarks registered under the Trade Marks Act, 1999 can be assigned with or without the goodwill of the business associated with the mark.
Registration of Assignment: The assignment of a trademark must be registered with the Trademark Office to be legally valid and enforceable.
Forms and Fees: The form and fees for registering an assignment depend on whether the assignment involves goodwill or not.
- Assignment with Goodwill: Form TM-P (INR 9000 per assigned mark)
- Assignment without Goodwill: Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill) (INR 2700)
Process: The assignment process typically involves:
- Executing a formal Trademark Assignment Agreement outlining the terms of transfer.
- Filing the appropriate form (TM-P) with the Trademark Office.
- Paying the prescribed fee.
- The Trademark Office examining the application and potentially raising queries.
- Upon approval, the assignment will be registered, and the assignee will be reflected as the new owner in the trademark register.
Benefits of Trademark Assignment:
- For Assignor: Allows monetizing the value of an established trademark.
- For Assignee: Gains access to a recognized brand identity, potentially increasing market reach and customer trust.
Important Considerations:
- Due Diligence: Both assignor and assignee should conduct due diligence to ensure the trademark is valid and free from encumbrances.
- Impact on Goodwill: Assignment with goodwill allows the assignee to leverage the established reputation associated with the mark. Assignment without goodwill allows separate uses of the mark, requiring clear differentiation to avoid confusion.
- Professional Help: Consider consulting a trademark attorney for guidance on the assignment process, agreement drafting, and potential legal implications.