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What is Trademark Assignment
Trademark assignment refers to the transfer of ownership of a trademark from one party to another. As an intellectual property, a trademark can be sold, licensed, or otherwise transferred like any other business asset. This process ensures that the new owner can legally use and enforce the rights associated with the trademark.
Types of Trademark Assignments
Documents Required for Trademark Assignment
Professional Fees
Trademark Assignment
₹
2499
- Exclusive of Government Fees
- Call , Email , Chat Support
- Document Verification and Drafting
- End-to-End Guidance
- Post-Assignment Support
- No hidden charges
Requirements for Trademark Assignment
Assets to Be Assigned
- Pending Trademark Applications
- Issued Trademark Registrations
- Goodwill
- Associated Marks, Applications, or Registrations
- International Registrations
- Common Law Trademarks
- Names of Living or Deceased Individuals
- Domain Names, Email Accounts, Social Media, or Website Accounts
Execution Requirements
- Signatories
- Witness
- Notarization
- Legalization
- Execution Date and Place
- Power of Attorney
Pre-Requisites for Assignment of Trademark
1.Trademark Must Be Registered
Only registered trademarks are eligible for assignment.
Unregistered trademarks cannot be transferred legally to another entity.
2.Assignor’s Legal Right to Assign
The assignor must be the rightful owner of the trademark.
The trademark registration must have been obtained lawfully.
The trademark must not have been previously transferred to another entity.
3.Assignment Must Be in Writing
The written agreement must include:
The identity of the assignor and the assignee.
Clear details of the trademark being assigned.
The consideration (monetary or otherwise) for the transfer.
The date of assignment.
The signatures of both the assignor and the assignee.
4.Proper Consideration for Assignment
The assignor must receive consideration in exchange for the trademark, which can be:
Monetary: Lump sum payment or royalty agreement.
Non-Monetary: Transfer of goods or services.
5.Duly Executed Agreement
The agreement must be properly signed by both parties.
Signatures must be witnessed and notarized for added legal validity.
6.Filing with Trademark Registry
The executed agreement must be filed with the relevant trademark registry.
The trademark register will be updated to reflect the new ownership.
How Covering Taxes Excels in Trademark Assignment Agreements
1. Comprehensive Party Identification
- Our experts ensure that the assignor’s and assignee’s names, addresses, and relevant legal details are accurately captured to avoid future disputes.
- We cross-verify all information to comply with legal and registry requirements.
2. Precise Trademark Description
- We meticulously document the trademark details, including registration numbers, classes of goods or services, and jurisdictional specifics.
- This ensures the trademark is uniquely identified, leaving no room for ambiguity.
3. Accurate Consideration Clause
- We draft a clear and enforceable consideration clause, whether it involves monetary compensation, royalties, or other forms of value.
- This guarantees the terms of the transfer are transparent and legally binding.
4. Effective Date and Execution Clarity
- Our legal team ensures the effective date is prominently stated and aligns with the intentions of both parties.
- This avoids any confusion regarding the transfer timeline.
5. Robust Representations and Warranties
- Covering Taxes ensures the assignor guarantees the trademark’s validity and their right to assign it.
- This protects the assignee from any unforeseen legal claims.
6. Tailored Covenants for Seamless Transition
- We include covenants such as the assignor’s support in transitioning the trademark and the assignee’s commitment to proper usage.
- This fosters cooperation and ensures the trademark’s reputation is upheld.
7. Clear Default and Termination Clauses
- Our agreements define circumstances under which either party can terminate the agreement or address defaults.
- This adds a layer of security and predictability for both parties.
8. Efficient Dispute Resolution Mechanisms
- We recommend and include efficient dispute resolution methods like arbitration or mediation, avoiding prolonged litigation.
9. Legally Compliant Execution and Notarization
- We facilitate proper signing and notarization of the agreement, ensuring it is legally enforceable and registry-compliant.
Restrictions on Assignment of Trademarks
1. Pending Cancellation or Opposition
- Restriction: A trademark that is under cancellation or opposition proceedings cannot be assigned until the matter is resolved.
- Our Role:
- We analyze the status of your trademark and advise on resolving any disputes or oppositions.
- Our legal experts guide you through the proceedings to clear the way for a valid assignment.
2. Subject to a License Agreement
- Restriction: Trademarks under valid and enforceable license agreements cannot be assigned without the consent of the licensee.
- Our Role:
- We review existing license agreements and facilitate negotiations with the licensee to secure necessary permissions.
- This ensures compliance and avoids future legal complications.
3. Use Likely to Cause Confusion
- Restriction: Trademarks being used in a way that confuses consumers about the source of goods or services cannot be assigned.
- Our Role:
- We assess the trademark’s usage and its market perception to prevent assignments that might mislead consumers.
- Our team advises on rebranding or clarifying usage if necessary to eliminate the risk of confusion.
Process of a Assignment of Trademark
- Eligibility of Assignee: The assignee is the individual or entity to whom the trademark is being assigned. To become the registered owner of the trademark, the assignee must apply for the assignment in the prescribed format.
- Filing the Application: The application for trademark assignment must be filed in Form TM-P. This can be done either by the assignor (the current owner of the trademark) or the assignee (the person receiving the trademark). The application can also be a joint request made by both parties to register the assignee as the subsequent proprietor.
- Timeframe for Application: The application for assignment should ideally be filed within six months from the date the assignee acquires the trademark. If the application is filed later, the applicable fee may increase.
- Assignment Without Goodwill: If the trademark is assigned without goodwill or if it is a certified trademark, approval from the Registrar of Trade Marks is required. This application should be submitted within six months of the assignment, or within an extended period as allowed by the Registrar.
- Advertisement of Assignment: The trademark assignment is then advertised in the Trade Marks Journal as per the Registrar’s directions. The assignment will be made public, and the period for objections, if any, will be defined by the Registrar.
- Submission of Registrar’s Direction: A copy of the Registrar’s direction and the advertisement of the trademark assignment must be submitted to the office. This ensures that the procedure is followed correctly.
- Registrar’s Review and Registration: After reviewing the assignment and related documents, the Registrar will confirm whether the assignee is the rightful owner of the trademark. Once satisfied, the Registrar will register the assignee as the proprietor of the trademark, and the assignment details will be recorded in the Trademark Register.
- Completion of Assignment: Once the Registrar registers the assignment, the assignee officially becomes the owner of the trademark.
