What Is The Process Of Trademark Transfer In India?
A trademark is an owner’s right to use the mark. This confers a bundle of rights which also includes the right to transfer the trademark. Thus, the Trademark Transfer assignment refers to the task of legally transferring the title of the trademark from the original owner (called the assignor) to the assignee, the person receiving such a right. In this post, we provide the legal and practical framework governing the trademark assignment process in India.
Process of assignment or transfer of trademark
Every registered trademark is assignable and transmissible. It can take one of the following forms –
The transmission or assignment of the trademark can be done with or without transferring the goodwill of the business. For example, Tata taking over the trademark of Jaguar’s business in India. This means that Tata would also take over the goodwill of the brand entirely in the automobile business.
The assignment can also be done for either some or all of the goods or services for which the trademark has been assigned. For example, a cement company having multiple other businesses like construction, quarrying, and interior designing, assigning the trademark of its construction business only.
Filing form TM-P
To submit your application to the registrar of a trademark for assignment of the trademark, you will have to fulfil the formalities of form TM-P along-with requisite fee.
Assignment Agreement
According to the Trademarks Act, an assignment can only be done by an agreement in writing between the parties concerned. Therefore, both the assignor and the assignee of the trademark must execute a legal document for transferring the trademark. To help you navigate the process of drafting an assignment agreement, below are some essentials –
Mentioning requisite details
It is the legal title over the trademark that is sought to be transferred. Thus, details about the trademark such as the Brand Name, Application Number, Class Number Current Status (Active or not), etc. should be specified in the assignment agreement.
Delineating legal titles
The operative part of the agreement must also mention that the person transferring the trademark is the lawful owner of it. The assignor must have all the rights, titles, and interests in the trademark. It must also establish that the assignor (either himself or through his successor, power of attorney holder). It has the full right, absolute power, and lawful authority to sell or assign the mark.
Consideration
This part should mention the amount paid by the assignee to the assignor in exchange for the trademark assignment. The receipt of this establishes that all rights, title and interests in the trademarks together has an allowance. You may also specify whether the transfer of trademark includes the transfer of the goodwill of the business in their trademarks, product permission, and other intellectual property rights.
Details about ancillary intellectual property rights
By way of the trademark assignment agreement, an assignee must specify that trademarks, trade names. Further, Internet domain names, and registrations and applications for the registration thereof together with all of the goodwill associated therewith are transferred
It is also in the assignee’s interest to ensure all other intellectual and industrial property rights of every kind. Additionally, nature throughout the world and however designated, whether arising by operation of law, contract, license, or otherwise.
The assignee and assignee may also mutually decide formalities relating to all registrations. Further, applications, renewals, extensions, continuations, divisions, or reissues thereof now or hereafter in effect.
Other relevant details the trademark assignment deed must mention
The right to sue of the assignee against any other party (for trademark infringement etc.)
The assignor shall not claim any right or interest in the said trademark after the agreement is concluded.
The assignee would be entitled to use and enjoy the trademark in respect of his or her business without any objection and interruption by either the title owner or any person laying claim under them.
Dispute resolution and Governing law – Parties may also mutually decide to include appropriate jurisdiction for dispute resolution such as arbitration. They may also specify the seat of such arbitration and choice of law governing the dispute.
Restrictions on transfer of trademark
While the process of trademark assignment is fairly procedural, the Registrar may refuse to register a trademark assignment in some cases.
In the case of the registered Trademarks, the Trade Mark Act 1999 puts certain restrictions. It is on the assignment of a registered trademark where there exist possibilities of creating confusion or interfere with another trademark.
The restrictions on the assignment that results in the creation of an exclusive right in more than one person for the same goods or services. Thus, the Registrar may disallow an assignment which would give rights over a trademark. This is to multiple parties for the same description of goods or services or those associated with each other.