Transfer of trademark rights in India
Trademarks like any asset can be transferred from one owner to another. Such transfers can take place in the form of an assignment, merger, or amalgamation.
Merger, Acquisition or Amalgamation
When companies go through merger, acquisition or amalgamation, the rights in the trademarks are either transferred along with the business or sold off separately. In the event of them being sold off separately, then an assignment deed is executed. However, in most cases, the rights in the trademarks are transferred along with the business to the new entity. The transfer is effected by mentioning the transfer of trademark rights in the business transfer agreement or any document that is used to effect such transfer.
Assignment of Trademarks
Assignment of trademarks is a process in which the owner of the trademark transfers the ownership in the trademark either with or without the goodwill of the business.
Assignment of trademarks with goodwill
This is an assignment where the trademark owner transfers the rights in the trademark along with the goodwill of the business.
The owner of the trademark “XYZ” is well known for manufacturing and selling of shoes. It decides to assign the trademark “XYZ” with goodwill. The goodwill of the business attached to the owner’s trademark with respect to the products or services being offered under the trademark is transferred to the assignee.
It means that the assignee can use the trademark “XYZ” for manufacturing & selling of shoes or for any other products or services.
Assignment of trademarks without goodwill
This is an assignment where the trademark owner transfers the rights in the trademark without transferring the goodwill of the business.
The owner of the trademark “ABC” is well known for manufacturing and selling of watches. It decides to assign the trademark “ABC” without goodwill. The goodwill of the business attached to the owner’s trademark with respect to the products or services being offered under the trademark is not transferred to the assignee.
It means that the assignee can use the trademark “ABC” for any other product or services other than manufacturing & selling of watches. In other words, the assignee can use the said trademark only in respect of goods and services that are different from that of the assignor.
Additional requirements to record the assignment of trademarks without goodwill
- The request filed with the trademark office to advertise the assignment in the trademarks journal to give notice to the public of the assignment without the goodwill of the business.
- The request should be filed within 6 months from the date of assignment. An extension of an additional 3 months to file the said request can be made.
- After the advertisement, an application for recording the assignment can be filed with the trademark office.
Information and Documents required for transfer of trademarks
Merger/Amalgamation Document:
Scanned copy of the notarized business transfer agreement or any document that effects the Merger or Amalgamation.
Assignment Deed:
Scanned copy of the duly stamped and notarized assignment deed, which shall mandatorily mention the effective date; the full name and address of the assignor (transferor) and assignee (the subsequent transferee), along with their signatures; the amount of consideration paid by the assignee to the assignor for the assignment; statement pertaining to whether the assignment is with goodwill or without the goodwill of business along with the details of trademarks that are transferred.
Affidavit of no-pending litigation:
Scanned copy of the duly stamped and notarized affidavit mentioning the details of the transfer, the transferred trademarks and attesting that there is no pending litigation and that the ownership of the trademark is not in dispute.
Power of Attorney:
Scanned copy of the POA simply signed by the authorised signatory of the Assignee. Legalization, notarization or apostille of the POA is not required.
Forms and official fees
| Description of the requests | Forms and official fees |
| Request for recording assignment when the trademark application is pending registration. | Form TM-M with an official fee of Rs. 900 per mark |
| Request for recording assignment when the trademark is registered. | Form TM-P with an official fee of Rs. 9000 per mark |
| Request for advertising the assignment without goodwill when the request is to record the assignment of a registered trademark without goodwill. | Form TM-P with an official fee of Rs. 2700 per mark |
Articles on the transfer of trademarks in India
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