Everything you need to know about trademark assignments: A Comprehensive Guide

In this fast-paced world of business and branding, trademark assignment is a critical step that enables the fluid transfer and use of intellectual property rights. Like any other property rights, intellectual property rights allow their creator or owners to benefit from their own work and investment made. The owners of intellectual property are granted exclusive rights over it upon registration. The owner, often known as the IP-holder, can assign or license intellectual property to a third party in exchange for royalties. In this blog, we will discuss an assignment of trademarks.

Trademark assignment means transferring rights, interests, titles and benefits from one person to another. It is defined under section 37 of Trademarks Act 1999. In simple words we can say that it is a comprehensive process of transferring the ownership rights of a mark from one entity to another. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

Assignment is different from licensing. Assignment involves the complete transfer of ownership, whereas in licensing, the licensor grants permission to the licensee to use the trademark under specific terms and conditions.

Who can assign a trademark?

According to section 38 any person who is the registered proprietor of a trademark, i.e., the trademark’s owner, has the right to assign the trademark to another person.

Types of assignment

1. Complete assignment: Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
2. Partial assignment: Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
3. Assignment with goodwill: The assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
4. Assignment without goodwill: Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Procedure for trademark assignment

• The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.
• After the execution, the assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Limitations on assignment of trademark:

• It is not permitted for an assignor to assign a trademark to another party if doing so will grant exclusive rights to other parties for the same or comparable goods or services.
• An assignor is not permitted to assign a trademark in cases where doing so would result in the formation of exclusive rights for the same or comparable goods or services in different individuals and locations throughout India.
• Furthermore, an assignor is not permitted to assign a trademark in cases where the goods or services being assigned are meant for distribution or sale outside of India yet the assignment confers exclusive rights on a number of individuals in different parts of India.

 

Case law of trademark assignment:

Cinni Foundation v. Raj Kumar Shah and Sons [2009]

In this particular instance, the owner was using the trademark "CINNI." The parties had signed and executed an agreement of assignment. It was eventually found out, nevertheless, that the trademark was not registered. The defendant made an effort to assert trademark rights. The court decided that as per the legal provisions, the assignee cannot obtain trademark title without the assignment deed being registered.  As a result, the defendant's trademark claim was rejected.

In summary trademark assignment isn’t just a legal formality; it brings forth a spectrum of benefits for both the assignor and assignee, contributing to brand value and business expansion. The procedure for the assignment of trademarks in India is very complex in nature. Therefore, it requires careful consideration to comply with all the legal requirements. 

In this fast-paced world of business and branding, trademark assignment is a critical step that enables the fluid transfer and use of intellectual property rights. Like any other property rights, intellectual property rights allow their creator or owners to benefit from their own work and investment made. The owners of intellectual property are granted exclusive rights over it upon registration. The owner, often known as the IP-holder, can assign or license intellectual property to a third party in exchange for royalties. In this blog, we will discuss an assignment of trademarks.

Trademark assignment means transferring rights, interests, titles and benefits from one person to another. It is defined under section 37 of Trademarks Act 1999. In simple words we can say that it is a comprehensive process of transferring the ownership rights of a mark from one entity to another. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

Assignment is different from licensing. Assignment involves the complete transfer of ownership, whereas in licensing, the licensor grants permission to the licensee to use the trademark under specific terms and conditions.

Who can assign a trademark?

According to section 38 any person who is the registered proprietor of a trademark, i.e., the trademark’s owner, has the right to assign the trademark to another person.

Types of assignment

1. Complete assignment: Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
2. Partial assignment: Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
3. Assignment with goodwill: The assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
4. Assignment without goodwill: Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Procedure for trademark assignment

• The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.
• After the execution, the assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Limitations on assignment of trademark:

• It is not permitted for an assignor to assign a trademark to another party if doing so will grant exclusive rights to other parties for the same or comparable goods or services.
• An assignor is not permitted to assign a trademark in cases where doing so would result in the formation of exclusive rights for the same or comparable goods or services in different individuals and locations throughout India.
• Furthermore, an assignor is not permitted to assign a trademark in cases where the goods or services being assigned are meant for distribution or sale outside of India yet the assignment confers exclusive rights on a number of individuals in different parts of India.

 

Case law of trademark assignment:

Cinni Foundation v. Raj Kumar Shah and Sons [2009]

In this particular instance, the owner was using the trademark "CINNI." The parties had signed and executed an agreement of assignment. It was eventually found out, nevertheless, that the trademark was not registered. The defendant made an effort to assert trademark rights. The court decided that as per the legal provisions, the assignee cannot obtain trademark title without the assignment deed being registered.  As a result, the defendant's trademark claim was rejected.

In summary trademark assignment isn’t just a legal formality; it brings forth a spectrum of benefits for both the assignor and assignee, contributing to brand value and business expansion. The procedure for the assignment of trademarks in India is very complex in nature. Therefore, it requires careful consideration to comply with all the legal requirements. 

In this fast-paced world of business and branding, trademark assignment is a critical step that enables the fluid transfer and use of intellectual property rights. Like any other property rights, intellectual property rights allow their creator or owners to benefit from their own work and investment made. The owners of intellectual property are granted exclusive rights over it upon registration. The owner, often known as the IP-holder, can assign or license intellectual property to a third party in exchange for royalties. In this blog, we will discuss an assignment of trademarks.

Trademark assignment means transferring rights, interests, titles and benefits from one person to another. It is defined under section 37 of Trademarks Act 1999. In simple words we can say that it is a comprehensive process of transferring the ownership rights of a mark from one entity to another. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

Assignment is different from licensing. Assignment involves the complete transfer of ownership, whereas in licensing, the licensor grants permission to the licensee to use the trademark under specific terms and conditions.

Who can assign a trademark?

According to section 38 any person who is the registered proprietor of a trademark, i.e., the trademark’s owner, has the right to assign the trademark to another person.

Types of assignment

1. Complete assignment: Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
2. Partial assignment: Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
3. Assignment with goodwill: The assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
4. Assignment without goodwill: Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Procedure for trademark assignment

• The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.
• After the execution, the assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Limitations on assignment of trademark:

• It is not permitted for an assignor to assign a trademark to another party if doing so will grant exclusive rights to other parties for the same or comparable goods or services.
• An assignor is not permitted to assign a trademark in cases where doing so would result in the formation of exclusive rights for the same or comparable goods or services in different individuals and locations throughout India.
• Furthermore, an assignor is not permitted to assign a trademark in cases where the goods or services being assigned are meant for distribution or sale outside of India yet the assignment confers exclusive rights on a number of individuals in different parts of India.

 

Case law of trademark assignment:

Cinni Foundation v. Raj Kumar Shah and Sons [2009]

In this particular instance, the owner was using the trademark "CINNI." The parties had signed and executed an agreement of assignment. It was eventually found out, nevertheless, that the trademark was not registered. The defendant made an effort to assert trademark rights. The court decided that as per the legal provisions, the assignee cannot obtain trademark title without the assignment deed being registered.  As a result, the defendant's trademark claim was rejected.

In summary trademark assignment isn’t just a legal formality; it brings forth a spectrum of benefits for both the assignor and assignee, contributing to brand value and business expansion. The procedure for the assignment of trademarks in India is very complex in nature. Therefore, it requires careful consideration to comply with all the legal requirements. 

In this fast-paced world of business and branding, trademark assignment is a critical step that enables the fluid transfer and use of intellectual property rights. Like any other property rights, intellectual property rights allow their creator or owners to benefit from their own work and investment made. The owners of intellectual property are granted exclusive rights over it upon registration. The owner, often known as the IP-holder, can assign or license intellectual property to a third party in exchange for royalties. In this blog, we will discuss an assignment of trademarks.

Trademark assignment means transferring rights, interests, titles and benefits from one person to another. It is defined under section 37 of Trademarks Act 1999. In simple words we can say that it is a comprehensive process of transferring the ownership rights of a mark from one entity to another. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

Assignment is different from licensing. Assignment involves the complete transfer of ownership, whereas in licensing, the licensor grants permission to the licensee to use the trademark under specific terms and conditions.

Who can assign a trademark?

According to section 38 any person who is the registered proprietor of a trademark, i.e., the trademark’s owner, has the right to assign the trademark to another person.

Types of assignment

1. Complete assignment: Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
2. Partial assignment: Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
3. Assignment with goodwill: The assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
4. Assignment without goodwill: Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Procedure for trademark assignment

• The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.
• After the execution, the assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Limitations on assignment of trademark:

• It is not permitted for an assignor to assign a trademark to another party if doing so will grant exclusive rights to other parties for the same or comparable goods or services.
• An assignor is not permitted to assign a trademark in cases where doing so would result in the formation of exclusive rights for the same or comparable goods or services in different individuals and locations throughout India.
• Furthermore, an assignor is not permitted to assign a trademark in cases where the goods or services being assigned are meant for distribution or sale outside of India yet the assignment confers exclusive rights on a number of individuals in different parts of India.

 

Case law of trademark assignment:

Cinni Foundation v. Raj Kumar Shah and Sons [2009]

In this particular instance, the owner was using the trademark "CINNI." The parties had signed and executed an agreement of assignment. It was eventually found out, nevertheless, that the trademark was not registered. The defendant made an effort to assert trademark rights. The court decided that as per the legal provisions, the assignee cannot obtain trademark title without the assignment deed being registered.  As a result, the defendant's trademark claim was rejected.

In summary trademark assignment isn’t just a legal formality; it brings forth a spectrum of benefits for both the assignor and assignee, contributing to brand value and business expansion. The procedure for the assignment of trademarks in India is very complex in nature. Therefore, it requires careful consideration to comply with all the legal requirements. 

In this fast-paced world of business and branding, trademark assignment is a critical step that enables the fluid transfer and use of intellectual property rights. Like any other property rights, intellectual property rights allow their creator or owners to benefit from their own work and investment made. The owners of intellectual property are granted exclusive rights over it upon registration. The owner, often known as the IP-holder, can assign or license intellectual property to a third party in exchange for royalties. In this blog, we will discuss an assignment of trademarks.

Trademark assignment means transferring rights, interests, titles and benefits from one person to another. It is defined under section 37 of Trademarks Act 1999. In simple words we can say that it is a comprehensive process of transferring the ownership rights of a mark from one entity to another. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

Assignment is different from licensing. Assignment involves the complete transfer of ownership, whereas in licensing, the licensor grants permission to the licensee to use the trademark under specific terms and conditions.

Who can assign a trademark?

According to section 38 any person who is the registered proprietor of a trademark, i.e., the trademark’s owner, has the right to assign the trademark to another person.

Types of assignment

1. Complete assignment: Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
2. Partial assignment: Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
3. Assignment with goodwill: The assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
4. Assignment without goodwill: Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Procedure for trademark assignment

• The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.
• After the execution, the assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Limitations on assignment of trademark:

• It is not permitted for an assignor to assign a trademark to another party if doing so will grant exclusive rights to other parties for the same or comparable goods or services.
• An assignor is not permitted to assign a trademark in cases where doing so would result in the formation of exclusive rights for the same or comparable goods or services in different individuals and locations throughout India.
• Furthermore, an assignor is not permitted to assign a trademark in cases where the goods or services being assigned are meant for distribution or sale outside of India yet the assignment confers exclusive rights on a number of individuals in different parts of India.

 

Case law of trademark assignment:

Cinni Foundation v. Raj Kumar Shah and Sons [2009]

In this particular instance, the owner was using the trademark "CINNI." The parties had signed and executed an agreement of assignment. It was eventually found out, nevertheless, that the trademark was not registered. The defendant made an effort to assert trademark rights. The court decided that as per the legal provisions, the assignee cannot obtain trademark title without the assignment deed being registered.  As a result, the defendant's trademark claim was rejected.

In summary trademark assignment isn’t just a legal formality; it brings forth a spectrum of benefits for both the assignor and assignee, contributing to brand value and business expansion. The procedure for the assignment of trademarks in India is very complex in nature. Therefore, it requires careful consideration to comply with all the legal requirements. 

In this fast-paced world of business and branding, trademark assignment is a critical step that enables the fluid transfer and use of intellectual property rights. Like any other property rights, intellectual property rights allow their creator or owners to benefit from their own work and investment made. The owners of intellectual property are granted exclusive rights over it upon registration. The owner, often known as the IP-holder, can assign or license intellectual property to a third party in exchange for royalties. In this blog, we will discuss an assignment of trademarks.

Trademark assignment means transferring rights, interests, titles and benefits from one person to another. It is defined under section 37 of Trademarks Act 1999. In simple words we can say that it is a comprehensive process of transferring the ownership rights of a mark from one entity to another. The original owner of the trademark is known as “the assignor,” and the future owner is known as “the Assignee.”

Assignment is different from licensing. Assignment involves the complete transfer of ownership, whereas in licensing, the licensor grants permission to the licensee to use the trademark under specific terms and conditions.

Who can assign a trademark?

According to section 38 any person who is the registered proprietor of a trademark, i.e., the trademark’s owner, has the right to assign the trademark to another person.

Types of assignment

1. Complete assignment: Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
2. Partial assignment: Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
3. Assignment with goodwill: The assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
4. Assignment without goodwill: Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Procedure for trademark assignment

• The first step in the process of Trademark Assignment is the execution of an agreement between the parties. The agreement shall be in writing and shall be signed by both parties.
• After the execution, the assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The next step is to advertise the trademark assignment. It shall be advertised in a manner and within a period as directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• If the application is complete in all aspects and the process is duly followed, the registrar will register the assignee as the new owner of the trademark.

Limitations on assignment of trademark:

• It is not permitted for an assignor to assign a trademark to another party if doing so will grant exclusive rights to other parties for the same or comparable goods or services.
• An assignor is not permitted to assign a trademark in cases where doing so would result in the formation of exclusive rights for the same or comparable goods or services in different individuals and locations throughout India.
• Furthermore, an assignor is not permitted to assign a trademark in cases where the goods or services being assigned are meant for distribution or sale outside of India yet the assignment confers exclusive rights on a number of individuals in different parts of India.

 

Case law of trademark assignment:

Cinni Foundation v. Raj Kumar Shah and Sons [2009]

In this particular instance, the owner was using the trademark "CINNI." The parties had signed and executed an agreement of assignment. It was eventually found out, nevertheless, that the trademark was not registered. The defendant made an effort to assert trademark rights. The court decided that as per the legal provisions, the assignee cannot obtain trademark title without the assignment deed being registered.  As a result, the defendant's trademark claim was rejected.

In summary trademark assignment isn’t just a legal formality; it brings forth a spectrum of benefits for both the assignor and assignee, contributing to brand value and business expansion. The procedure for the assignment of trademarks in India is very complex in nature. Therefore, it requires careful consideration to comply with all the legal requirements.