Trademarks like any asset can be transferred from one owner to another. Such transfers can take place in the form of an assignment, or merger or amalgamation between two entities.
For instance: Assignment is where entity A assigns or transfers or transmits the rights over his/her trademarks to entity B.
In case entity A mergers with entity B, and there is transmission of trademarks rights from A to B, it would also constitute assignment.
Assignment of trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. An assignment can either be with goodwill or without goodwill:
Assignment with goodwill: This is an assignment where the owner transfers the rights and value of the trademark as associated with the product it sells.
For example, A, owner of “TH” trademark for manufacturing and selling of watches, can assign the trademark along with giving the assignee the right to use the said trademark for the same product.
1. Forms and Fees:
An application to record assignment of a pending or a registered trademark can be made through the following respective Forms:
- Pending Trademark: (assignment with goodwill)
Form TM-M (CORRECTION OF CLERICAL ERROR OR FOR AMENDMENT U/R 37)
Official fee- INR 900 per mark - Registered Trademark: (assignment with goodwill)
Form TM-P (SUBSEQUENT PROPRIETOR BY WAY OF ASSIGNMENT OR TRANSFER OF MARK)
Official fee- INR 9000 for each assigned mark
Assignment without goodwill: This is an assignment where the owner restricts the assignee to use trademark for the products he uses it for. That is, the goodwill attached to the owner’s brand with respect to the product already being sold under such brand, is not transferred to the buyer. This means that assignor & assignee both can use the same trademark but in dissimilar goods or services.
For example, if the owner of the trademark “TH” uses it for manufacturing and selling of watches and decides to assign it without goodwill, it means that the assignee can use the trademark “TH” for any other product other than watches.
Procedure for filing an application to record assignment without goodwill:
In order to record assignment without goodwill of business, the Applicant needs to make an application under Form TM-P (DIRECTION OF REGISTRAR FOR ADVERTISEMENT OF ASSIGNMENT WITHOUT GOODWILL- official fee INR 2700) within 6 months from the date of the assignment (extendable by 3 months as per prescribed forms), requesting the Registrar to advertise the assignment, that is give notice to the public of the assignment without goodwill of business.
Post such advertisement, the application for recording the assignment can be filed with the above-mentioned Form TM-M/TM-P respectively.
Such a Form shall be accompanied with a copy of the Form TM-P (DIRECTION OF REGISTRAR FOR ADVERTISEMENT OF ASSIGNMENT WITHOUT GOODWILL) as well as a copy of the advertisement notice as issued by the Registrar.
2. Documentary Requirements:
Assignment Deed: A 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 consideration paid by the assignee to the assignor for the assignment; statement pertaining to whether the assignment is with goodwill or without goodwill of business along with the details of trademarks to be assigned.
For Applicants outside India, the assignment deed must to be notarized in the country where it is executed, and the same can be stamped in India.
Affidavit of no-pending litigation: In order to process such assignment requests, the Indian Trade Marks Registry has now made it mandatory to submit an affidavit attesting that there is no pending litigation and that the ownership of the trademarks are not in dispute. Accordingly, along with the assignment deed, the assignee (transferee) ought to submit a duly stamped and notarized affidavit to mentioning the details of the assignment and the assigned trademark and attesting that the ownership of the said trademark is not in dispute.
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