Trademarks Assignment in India

What is Trademark?

Trademark gives identity to a brand; it is a recognizable sign, word, design or an expression which is used to identify the goods or services of a seller from those of others. A trademark helps in securing the brand name from being used or misused by the competitors; it also helps prevent confusion and manipulation of consumers, who come to associate with quality and attributes of a distinct brand in particular. A trademark is mostly located on the label, a voucher, or on the product itself.

Is it important to register the Trademark/Service mark before filing the assignment?

Yes, it is important to register a trademark/service mark before filing the trademark assignment. The Registrar office will not accept any mark for assignment if it is not registered, the mark holder must apply for the registration before attempting an assignment.

What is necessary to effect a valid assignment?

The specific requirements for a trademark assignment vary by jurisdiction but the basic demands of the same are;

• The assignment needs to be in writing;
• Both the parties needs to be identified before the assignment.
• The mark that is registered for trademark assignment needs to have an identification with the Registered office.
• Identifying the goods and services related to the trademark or service mark.
• Trademark assignment is to be given for consideration;
• The effective date of assignment needs to be mentioned.
• All the documents need to be duly signed by the assignor and the assignee and in the prescribed format.
• Transfer of goodwill which depends on some jurisdictions.

How to apply for Trademark assignment?

Submitting the Documents: The required documents are to be submitted and a deed is to be drafted by both the parties.

Forms Filing: Once you submit the deed then, further move forward with filing necessary forms(TM-16,TM-23,TM-24).

Examination: The Documents and deeds are then examined by the Registrar and published in the journal if there are no defects. A receipt is sent to the applicant regarding the same. The registrar again checks and verifies the agreement to make sure that there are no confusions attached to the same.

Publishing in Journal: Once it passes the scrutiny it is published in the Journal

Trademark Assignment: Finally if there are no public objections and third party claims the trademark assignment will be changed and registered in the Trademark Registry.

What is Trademark Assignment?

The basic meaning of trademark assignment is transferring the ownership of marks. It includes transferring owner's rights, title and interest in a trademark or a service mark. The person transferring is known as "assignor" and the receiving party is called "assignee". It is different from a license, in assignment the property rights of ownership is transferred to a new owner(assignee).

When do Trademark Assignment occur?

Assignment of a trademark or a service mark might occur due to a relatively isolated transaction, or as part of a much larger distribution of tangible and intangible assets, it can include sale of the assets of business.

Is it necessary to notarize or legalize the documents of assignment?

This is not constant for all, it is dependent on the jurisdiction and varies accordingly. The laws and regulations for certain trademarks which are used in commerce or are subject to pending registrations should be checked for specific requirements.

What are the different types of Trademark?

There are various types of trademarks based on their categories, they are as follows:

• Product Mark
• Service Mark
• Collective Mark
• Certification Mark
• Shape Mark
• Pattern Mark
• Sound Mark