Trademark assignment

There are four types of trademark assignments-

1. Partial assignment,
2. Complete assignment,
3. An assignment with Goodwill, and
4. An assignment without Goodwill/ Gross assignment.

All the four types of trademark assignments are briefly explained hereunder-

• Partial assignment–Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.

• Complete assignment–Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.

• An assignment with Goodwill–Under ‘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.

• Gross assignment or 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.

The list of pre-requisites for the trademark assignment is-

• The trademark assignment must be in writing.
• The assignment must have the following two identifying parties-
• An assignor (owner of the trademark); and
• An assignee (buyer of the trademark).
• The assignor must have the intention and consent for the trademark assignment.
• The trademark assignment must be for proper adequate consideration.
• Following is the list of documents required for trademark assignment-
• Trademark assignment agreement,
• Trademark certificate,
• NOC from the assignor,
• Identified documents from the assignor and assignee.

The procedure for applying for a trademark assignment is narrated hereunder-

1. Filing an application for trademark assignment in Form TM-24 or Form TM-23 (in case of joint request). Such an application can be filed by either the assignor or the assignee or both.
2. Filing of Form TM-P.
3. Filing of all the requisite documents relating to trademark assignment with the Registrar of the trademark. The filing needs to be done within a period of six months from the date of acquisition of proprietorship.
4. The registrar of the trademark will specify the advertisement of the trademark assignment.
5. Based on the registrar’s specification, the applicant is required to make an advertisement for the trademark assignment.
6. The applicant is required to submit the copy of the advertisement and copy of the registrar’s direction in the office of the registrar.

On being satisfied, the registrar will approve the application. Accordingly, the registrar will register the name of the assignee as the proprietor of the trademark.