How to transfer the ownership of a registered Trademark in India?

Trade Mark

A trademark is an Intellectual Property which is intangible in nature. A trademark is of two types that is Registered Trademark and Unregistered trademark. It means that registration of trademark is not mandatory; however, registration is required to avail various privileges of registration prescribed under the Trademark Act, 1999 that are Protection against the unauthorized use of trademark, Economic Rights over the trademark and so on.

Many Trademark owners have a common query that whether a registered trademark can be sold and if yes then how?

So in this blog, we will discuss the concept of transfer of ownership of registered trademark.

Firstly, Yes, the ownership of a registered trademark can be transferred to another person and the process of transferring ownership of a trademark is known Assignment of Trademark under Section 37 of the Trademark Act, 1999.

 

Meaning of Assignment of Trademark

 

Section 37 of the Trademark reads as follow-

In simple terms, Trademark Assignment is a legal method to transfer the ownership rights from the owner of the trademark, known as Assignor, to another person, known as Assignee.

 

Kinds of Assignment of Trademark

The assignment of trademark can be done in two ways that are –

Complete Assignment of Trademark –

When the trademark owner transfers the absolute ownership rights without imposing any restriction to the assignee in order to earn royalties out of it then it is known as Complete Assignment of Trademark. After the complete assignment, the assignor does not possess any right in relation to the trademark and thus assignee becomes the absolute owner.

Partial Assignment of Trademark

Sometimes one trademark is used in respect of various products and/or services. In such cases, when the trademark owner transfers the ownership rights in regard to certain products and/or services instead of all products and/services sold through that trademark then it is known as Partial Assignment of Trademark.  In this method, the assignor might retain certain rights over such trademark transfer.

For example, ‘A’ is the trademark owner of the registered trademark “ABC” which is used for both watches and sunglasses and then A sells the ownership of trademark with respect to watches only and retain the rights over Sunglasses. This type of transfer is referred as Partial Assignment.

 

Documents Checklist for Assignment of Trademark

  1. Trademark Assignment Agreement
  2. Trademark Certificate from the Assignor
  3. No Objection Certificate from the Assignor
  4. Identification documents from both the assignor and assignee –
    • PAN Card
    • AADHAR Card
    • Passport Size Photo

 

Process of Assignment of Trademark

Execution of Assignment agreement

The first step is to prepare and execute the Assignment Agreement. It is the legal document whereby assignor agrees to transfer the ownership of trademark to the assignee for adequate consideration. In this document, both of the parties writes the terms and conditions of the assignment.

File Assignment Application with the Trademark Registry – Form 23/Form 24

The next step is to file application for assignment of trademark with the Registrar of Trademarks in the Form TM-P. All the required documents are required to be filed with the application. Moreover, the application for assignment of trademark must be done within 6 months from the date of transmission of ownership.

Processing of Application

Once the application and required documents have been submitted with the Registrar of Trademark, the next step is that the Trademark Registry shall process the application.

Advertising of the Assignment

The next step is to make the advertisement of the assignment of trademark in the mode and manner prescribed by the Registrar of Trade Marks. After the advertisement, the applicant must submit the copy of advertisement before the Trademark Registry.

Approval of Assignment Application

Subsequently, the registrar of trademark will scrutinize and verify the details and documents attached to the assignment application. When the registrar is satisfied with the application then it shall approve the application. Subsequently, the registrar shall make the required changes in the Register of Trademark.

 

Conclusion

The process of Trademark assignment is technical and thus requires professionals’ help to complete the process.

 If you are looking for Professionals’ help for Trademark Assignment  and to guide you through the process then contact your Trustworthy Advisors Manthan Experts by dialing at +91-9643-969-969 or mail at info@manthanexperts.com.

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Knowledge Update :

Design Registration under the Designs Act, 2000

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