stamp duty on trade mark assignment

What Is the Stamp Duty for Trademark Assignment?

Trademark assignment requires the transfer of trademark ownership from a single party to the next. This could happen for numerous reasons like company acquisitions, mergers or merely the purchase of a trademark. An essential component of this is the payment of stamp duty that the government levies on legal papers. Let us discuss what stamp duty is, why it is essential in trademark projects, and also how it’s estimated and paid out in India?

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What is Stamp Duty?

Stamp duty is tax paid on specific legal documents. This tax was created to make these documents legally binding. Without paying the appropriate stamp duty, documents are not legal under the law. When it comes to trademark transfer, stamp duty can make the transfer of trademark registration rights permissible.

Why Stamp Duty Matters in Trademark Assignment?

If a trademark is given to the next party, the new proprietor utilizes the trademark for their services or products. This can be a substantial change, particularly in case the trademark is recognizable and has a good reputation. Stamp duty is paid out on the assignment document to record this transfer of rights legally. Additionally, it protects both parties in the transaction through legal evidence of the assignment.

Types of Trademark Assignment

Prior to discussing stamp duty details, understand the kinds of trademark assignments:

Partial Assignment

This is transferring just part of the trademark rights to someone else. For instance, a business might appoint the right to work with a trademark for particular services or products but keep the rights for various other uses.

Complete Assignment

Here the whole trademark along with associated rights are assigned to the new owner. The assignee can subsequently use, sell and receive royalties from the trademark.

Assignment with Goodwill

Goodwill is the mark of the trademark’s reputation and brand name worth. An assignment with goodwill means the new owner receives a good track record and consumer loyalty related to the trademark too.

Assignment Without Goodwill

Here only the trademark is transferred (no brand value is transferred). The initial owner may still use the trademark for various other businesses however the new owner is authorized to put it to use for the agreed upon purposes.

How To Apply for Trademark Assignment in India?

There are numerous steps in applying for trademark assignment in India. This is a simplified guide to explaining the process:

Prepare the Assignment Agreement:

This document defines the terms and conditions associated with the trademark transfer. It should specify who’s involved, what trademark is being assigned and if the assignment is goodwill.

Calculate Stamp Duty:

The precise amount of stamp duty due depends upon the valuation of the trademark and also the nature of the assignment. Stamp duty is normally a proportion of the worth of the trademark. This is typically 5% of the transaction value in India.

Execute the Agreement:

Both need to sign the assignment agreement. Have the document notarized as a further legal validation.

Send the Agreement to the Trademark Registrar:

The assignment agreement has to be submitted with the Trademark Registrar within 6 weeks from the assignment date. It is possible to do this online with the Trademark Registrar of India site.

Pay Stamp Duty:

Stamp duty is usually paid by electronic stamping, physical stamp papers or franking. The fastest and most typical technique would be e-stamping.

Receive the Registration Certificate:

After the Trademark Registrar verifies the assignment agreement and stamp duty continues to be paid out, a brand new registration certificate is issued in the assignee’s name. This certificate is evidence of trademark assignment.

Detailed Calculation of Stamp Duty

Stamp duty might be calculated differently depending on the assignment. The way it’s typically calculated is shown below:

Trademark Value:

To begin with, figure out the worth of the trademark. This could be based on things including market value, earnings from the trademark, and brand popularity.

Percent of Stamp Duty:

India’s stamp duty rate on trademark assignments is 5% of the trademark value. However this rate could differ by state regulations and assignment specifics.

Consideration Amount:

Consideration amount is the cost paid for the trademark assignment. From this amount stamp duty is computed.

Extra Charges:

There could be extra fees or charges for paying stamp duty. They might include e-stamping service fees or notary fees.

The Benefits of Registering a Trademark Assignment

The registration of a trademark assignment and also the payment of stamp duty provides several benefits:

Legal Protection: Makes sure the assignment is legally recognized and enforced in court.
Clear Ownership: Gives evidence of the new ownership and decreases risk of disputes.
Value of Brand: Helps maintain and possibly improve brand value related to the trademark.
Market Expansion: Allows the assignee to enter new markets utilizing a recognized trademark or to expand existing markets.
Financial Benefits: Allows the original owner to profit from the trademark leading to financial returns.

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Anyone who transfers trademark rights should know about stamp duty for trademark assignment. Follow these steps and pay the proper stamp duty to help make the assignment legal and protected. This protects both parties and helps keep the trademark integrity and value.

Regardless of whether you’re a business person delegating a trademark or a person purchasing one, knowing the assignment and stamp duty procedure can help you deal with this area with confidence.

What is the stamp value assigned to a trademark?

The stamp value for trademark assignment is normally 5% of the trademark transaction value. This rate might differ by state regulations and the terms of the assignment agreement.

What is the stamp duty for trademark assignment deeds in Delhi?

The stamp duty for any trademark assignment deed is 5% in Delhi. Nevertheless, talk to local authorities for up-to-date rates.

Is stamp duty payable on a deed of assignment of IP rights?

Yes, stamp duty is levied on a deed of assignment of IP rights (including trademarks). The precise amount depends upon the IP value and state-specific regulations.

What are the requisites for trademark assignment?

The requirements for Trademark assignment are a signed assignment contract, payment of appropriate stamp duty, submission of the agreement to the trademark Registrar and updating the trademark registry with the new owner’s details.

How much does trademark assignment cost?

The cost of Trademark assignment includes stamp duty (5% of the transaction value) and filing charges by the trademark Registrar. There might also be legal fees related to drafting and notarizing the assignment deed.

What is the difference between trademark licensing and assignment?

Trademark licensing enables the licensee to use the trademark in specified conditions while ownership stays with the licensor. Trademark assignment is an entire transfer of trademark ownership to the assignee.

Ankit Pal is a content writer with a keen interest in law and legal research. A graduate of HNLU, Raipur, he has contributed numerous papers published in reputed journals, showcasing his expertise and dedication to delivering high-quality work.

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What is the Stamp Duty For Trademark Assignment?

Post author: D. Lalitha B.com B.L (Hons)
Post published: June 6, 2024
Post category: Intellectual Property / Trademark

Last Updated on June 6, 2024 by D. Lalitha B.com B.L (Hons)

Trademarks are important to businesses because they foster customer loyalty and memorability. They envelop names, logos, or particular images that separate an organization’s contributions from those of others in a particular industry. Trademark assignment is the most common way of moving brand name ownership starting with one entity then onto the next.

Kinds of Trademark Assignment:

There are four methods available for assigning a trademark. They’re:

Partial Assignment:
The new owner receives only a part of the rights, title, and interest in the trademark.
The current owner retains some rights, like the authority to use it in particular markets or with specific goods/services.
Complete Assignment:
All rights, titles, and interests in the trademark are transferred from the current owner to the new one.
The new owner becomes the sole owner, assuming all associated rights and duties of the trademark.
The assignment with goodwill:
Both the business associated with the trademark and its ownership rights are transferred.
This occurs when a business is sold, and the new owner wishes to obtain the related trademark in addition to the business.
The assignment without goodwill:
Only the ownership rights of the trademark are transferred.
Business or goodwill associated with the trademark is not included in the transfer.
Employed when the trademark owner wishes to sell the trademark separately from the business.

Why is trademark Assignment Important?

Financial gain for the assignor:
Selling the brand name can generate revenue for the business owner.
The funds can be applied to retirement or other companies.
Asset acquisition for the assignee:
Acquiring the trademark provides a valuable asset for establishing and growing the business.
Increasing efficiency in business processes:
Facilitates brand consolidations, strengthening identities and marketing effectiveness.
Resolves legal issues related to trademark ownership, saving time and money.
Safeguarding brand value:
Ensures the trademark is used according to the original brand vision.
Gives reassurance about the brand reputation and usage.

Requirements of the Trademark Assignment Deed:

The assignment deed must only be submitted in writing.
The trademark that is being issued should be identified.
The parties must both complete the assignment deed.
The purpose of the assignment deed should be money motive.
Whether the assignment is with or without goodwill should be included in the assignment deed.
In accordance with the Indian Stamp Act, the assignment deed must be stamped.

Applying Trademark Application:

Here’s the process of applying for a trademark online in India

Create a profile with the Trademark Registrar:
Register on the Trademark Registrar’s website.
Provide necessary information:
Identify goods and services.
Provide company name and type of mark filing.
Submit the required documents:
Drawing of the proposed mark.
Affidavit of use or intent to use the mark in commerce.
Proof of ownership of the mark.
Pay filing fee:
Submit the required fee for trademark application processing.
Send in an authentic, verified signature:
Authenticate the application with an authenticated copy of the signature.
Application review:
The application is sent to an examiner for review.
Examiner’s decision:
The examiner makes a decision about, to allow the mark to be put into use.
Approval and registration:
If approved, receive a registration certificate with the symbol ® and identifying information.

Fees and Payments:

Here’s the breakdown of the fees necessary for applying for a registered trademark online in India:

₹9,000 for electronic filing.
₹10,000 for filing in person with the Trademark Registrar.
₹4,500 for e-filing.
₹5,000 for filing by hand.
5% of the application or assignment value, as per the Stamp Duty Act, is payable per trademark application or assignment submitted.

Forms of Identification:

Here are the options for submitting forms of identification when applying for a registered trademark:

Submit a filing affidavit signed by the owner or owner’s representative.
The affidavit must be scrutinised by a competent individual.
Include brand logo, description, and date of first use.
List names and addresses of all owners or rights holders.
Submit an application containing documents establishing brand ownership.
Include a copy of the registration of the trademark certificate or a statement from the entity claiming ownership.
Provide a statement confirming the applicant’s consent to use the mark.
Provide contact information for authorised delegates.
Submit an application containing extracts from earlier submission documents.
Include a statement confirming the copying of copyrighted material without permission.

What does the “Stamp Duty” entail?

Here’s an overview of stamp duty and its significance:

Stamp duty is imposed by state governments.
It applies to different sorts of business endeavours, like real estate transactions, insurance policy administration, and financial transactions.
Mandated by the Indian Stamp Act of 1899 Section 3.
Ensures legal completion and validity of documents.
State governments collect revenue from stamp duty.
Rates are determined based on document type and transaction amount.

What is Stamp Duty for trademark Assignment?

Here’s a summary of stamp duty for trademark assignment, including relevant rates:

Stamp duty is payable on a deed of IP rights assignment, except for copyright assignments, which are exempt.
Imposed by state law, governed by the Indian Stamp Act of 1899.
For trademark transfer deeds and related paperwork to be legally enforceable in India, they must be stamped.
The amount of stamp duty for trademark assignment is based on the assigned trademark’s market value.
State governments determine market value, which varies from state to state.
Utilized to initiate registration requests for an individual’s title following an assignment.
Mumbai (Maharashtra): 3%
Kolkata (West Bengal): 5%
Ahmedabad (Gujarat): 5%

The Key role of Stamp Duty in the context of trademark assignment:

Here’s the key role of Stamp Duty in trademark assignment:

Legal documents, including trademark transfer deeds, must be duly stamped in accordance with the Indian Stamp Act of 1899.
Non-payment of stamp duty can render the deed invalid, unenforceable, and, or not valid in the court.
Stamp duty acts as a source of revenue for the government.
The generated revenue is contributing to funding various public benefits initiatives, like social welfare, education, and infrastructure development.

Conclusion:

All in all, consideration should be given to stamp duty while assigning a trademark. To ensure a consistent and hassle-free assignment of trademarks, it is advisable that you get the advice of a lawyer who can direct you through the stamp duty payment method and assist you with consenting to whatever legal criteria are still there. To ensure the viability of a trademark assignment in India, it is important to fathom the stamp duty guidelines and fulfil the associated requirements.

Could you explain the concept of a trademark assignment?

A trademark assignment, otherwise called a trademark transfer, alludes to the most common way of transferring the ownership of a brand, starting with one party and then onto the next. It includes the total transfer, with all rights, title, and interest in the brand.

Can a trademark assignment be partial?

Yes, it can be partial. It is possible to transfer only a part of the rights, title, and interest in a brand name as long as both parties agree and the terms are clearly stated in the assignment agreement.

Why Notarising a Trademark Assignment is Important?

The assignee benefits from the assignment being notarised. In order to prove that there’s not a possibility of deliberate document fraud pertaining to the assignment, notarising is also vital. The assignment consequently, it must be notarised with the appropriate stamp duty. Moreover, the assignor needs to give a notarised affidavit verifying the way that the brand name is really theirs.

Is trademark assignment possible before registration?

Yes, you can do it by submitting the TM – M form with the prescribed fees.

What if the registry raises a query on an assignment?

If the registry issues a notice on your request for an assignment, you can reply to it by submitting a letter in the prescribed format.

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D. Lalitha B.com B.L (Hons)

Stamp Duty for Transfer or Assignment of Intellectual Property

I was just looking through the Stamp Act 1949 (Act 378), which you can download by clicking here .

Under section 35, “The instruments appearing under the heading of “General Exemptions” in the First Schedule shall not be chargeable with duty.” This looks promising and I had a look.

Unfortunately, the words “intellectual property” never appear under the General Exemptions .

Then I kept reading. Under Item 32, which is related to “Conveyance, Assignment, Transfer or Absolute Bill of Sale”, there appears under the Exemptions :

“(d) Transfer or assignment on sale of any copyright, trade mark, patent or any similar right.”

That means that transfers, and assignments (pursuant to sale) of copyrights, trade marks, patents and “other similar rights”, which are generally known as “intellectual property rights (IPR)” would be exempted from stamp duty. At least, that’s how it looks like to me.

Incidentally, our Intellectual Property Corporation is pushing (and has established) a marketplace for various intellectual property. To visit the marketplace (called IPR Marketplace) please click the following link:

It stands to reason that if you, being an interested buyer or seller of intellectual property rights, happen to sell and transfer or assign your copyrights, trade marks, patents, and such other IPR’s, you’ll save on stamp duty.

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Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
I got married just after I filed my application and my last name changed. This is a name change of the owner.

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP) section 501.01(a) .

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons:

A critical piece of information was omitted from the cover sheet.
The document is illegible or not scannable.
The information on the cover sheet and the supporting document do not match.
The assignment was not transferred with the good will of the business.

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 .

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to:

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing.

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

Go to TSDR .
Enter the application serial number or registration number.
Select the “Status” button.
Scroll down to the “Current Owner(s) Information” section.
Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form .
If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

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Assignment of trademarks in India

Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of a trademark 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. In other words, it is transferring of proprietary rights in the property of the proprietor. The manner in which an assignment can be made are as follows:

Complete assignment;

In a complete assignment, the owner of the trademark transfers all the rights with respect to the trademark, including the transfer of the rights such as right to further transfer, earn royalties, etc., to another entity.

For example, A, owner of “xyz”, sells his brand to another through an agreement to B. After this, A does not retain any rights with respect to “xyz”.

Partial assignment;

In a partial assignment, the transfer of ownership is restricted to specific product or service only. The owner may retain the right to further transfer, to earn royalties etc.

For example, A, owner of a tea and a biscuit brand, transfers proprietary rights only with respect to the tea brand and retains the rights over the biscuit brand, this is said to be a partial assignment.

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.

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.

Once a trademark is assigned it is important to record the change in ownership with the Trademark Registry. Specific forms with fees have to filed to ensure that the records reflect the ownership details.

Click here to view image.

Procedure to record the assignment with the Registry :

Assignment of an unregistered mark:

Section 39 stipulates that an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.

Assignment of a registered trademark:

Section 38 stipulates that trade Marks can be either assigned in full or transmitted in part, with or without the goodwill of the business. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. (Rule 68 of the Trademarks rule, 2002).

In a case of assignment or transfer of a single trade mark:

if made within six months from the date of acquisition of proprietorship, then the official fee is Rs. 5000;
if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs. 7,500;
if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs. 10,000.

In case of assignment of more than one trademark:

if made within six months from the date of acquisition of proprietorship, then the official fee is Rs. 5000 for the first mark and Rs. 1000 for every additional mark;
if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs. 7,500 for the first mark and Rs. 1500 for every additional mark;
if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs. 10,000 for the first mark and Rs. 2000 for every additional mark.

From a practical perspective , this is what you need to incorporate in any assignment deed which involves trademarks;

The assignment deed must be in writing where the assignor’s name must be same as it is in the Register of Trademarks, i.e. the owner of the trademark;
It is absolutely necessary that the territorial extent of the assignment is clearly laid down; for example, if the assignee is based in India, then it is a must that the assignment deed contain a clause saying the assignment is for that particular region;
The next obvious thing is, the mark/marks that the proprietor wants to assign must be mentioned clearly;
The consideration that the assignee needs to pay should be mentioned as well; the standard phrase of “good and valuable consideration” wouldn’t hold good; The stamp duty has to be calculated on the basis of the consideration.
The effective date of the assignment must be laid down clearly;
The most important part of an assignment deed is to mention if the assignment is along with the goodwill or not.

As can be noted, transfer of proprietary rights in trademark is similar to transfer of any other asset; Trademarks are valuable assets since they quantify a company’s reputation and goodwill. While making sure the assignment is in order you also have to keep the records of the trademark registry updated with these changes.

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Trademark assignment

Last updated : February 11th, 2023 06:23 pm

Like any other property/ asset, the owner of the trademark (i.e., the assignor) has the right to sell, license, or transfer the same. The transfer of trademark is possible through the Trademark Assignment Agreement or Trademark Licensing.

The current article explains the term trademark assignment along with its advantage, types of trademark assignment, pre-requisites, and procedure of trademark assignment.

Understanding the term trademark assignment

The term trademark assignment is defined under section 37 of the Trademark Act, 1999. As per the definition, the trademark assignment means transferring the owner’s right, interest, and title in a trademark and a brand mark.

In simple words, the process of transferring the right and ownership of the trademark to any other person is known as a trademark assignment.

Some of the advantages of the trademark assignment (concerning both the owner and the buyer) are listed hereunder-

The trademark assignment enables the owner of the trademark to encash the value of his brand.
With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
The assignment of the trademark supports both the assignor and the assignee to expand their respective business.
In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.

Types of trademark assignment

There are four types of trademark assignments-

Partial assignment,
Complete assignment,
An assignment with Goodwill, and
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.

Pre-requisites and procedure for trademark assignment

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

The trademark assignment must be in writing.
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.
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-

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.
Filing of Form TM-P.
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.
The registrar of the trademark will specify the advertisement of the trademark assignment.
Based on the registrar’s specification, the applicant is required to make an advertisement for the trademark assignment.
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.

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What are the Documents Required for Assignment of Trademark?

Read this blog to comprehend what the assignment of trademark is all about, and the benefits, the advantages and the requirements of the same. It majorly discusses and mentions what pre-requisite documents are required for the Assignment of Trademark. Find out more details on this blog.

Documents Required for Assignment of Trademark: When an individual, business entity, or organization (private/ non-profit) claims the sole right to a product or a kind of service and establishes the source of the products and services that can credit them as rightful owners, they attain or are assigned the Trademark of the object or service. It could be a design used commonly but developed by the individual, business or organization, that would help potential customers and other people working in the same field or sector, recognize and associate the product or service with its source, regardless of where it is seen.

Table of Contents

Assignment of Trademarks and their Major Types

In the Trademark Act of 1999, it is permissible for a trademark assignor, who is also the owner of the product or services at present, to choose to sell the ownership or the license which made the product or service unique to him and his property, like any other proprietorship, be it of land, estate etc. The one to who the trademark is assigned, and is the owner of the license henceforth is the assignee in the relation. Assignment of Trademark is a complicated process with legal consequences and proceedings.

Hence it is advisable that owners who are willing to transfer the entitlement, rights, yields and benefits of the product and services they own, to another, should hire legal advocates to go about the process in a fool-proof manner and not incur any legal misgivings through and through. It should also be noted that, by law, only the one who is registered as the legal owner of the trademark is accredited for property ownership and it is imperative that he alone, is considered eligible as assignor to confer the same upon another person, i.e., assignee.

There are various kinds of trademark assignments, broadly self-directive, complete ownership and partial ownership of the license. This has been discussed below:

A complete ownership is, as the name suggests, the complete, uncompromised transfer of license, profits, title, trademark, interests and business as a whole to another person, business organization or legal organization that has complete rights over the products that were sold under the trademark from before, as well as the potential new add-ons. This also maintains the obvious, that the previous owner, who is the assignor, in this case, has no rights and irrevocable surrenders from the ownership of the product and the license of Trademark.

Partial ownership is the selective transfer of product and license ownership. The assignor doesn’t unconditionally confer the title, interests and ownership of the Trademark products to another individual, business or company organization. It is maintained that the interests and benefits only of the products and services whose ownership has been agreed upon to be transferred to another person, organization, or business, are the ones that the assignee can lay claim and henceforth, the ownership of the trademark over, too. It is established that no party shall intervene in ownership rights on products segregated by partial assignment of Trademark , that is, even though the conference of the Trademark or service marked brand is retained for some of the products and transferred for others.

Assignment with Goodwill and Assignment without goodwill are the two self-directive ways of conferring the license, interest, and as a result, the Trademark of products and services in such a way that the assignor pre-determines the usability of the license and brand name for the product and services, thereafter. In assignment with goodwill, the assignor permits the assignee complete whole rights to use the trademark name for the product and services that it had been attained for as well as other products and services which the assignee may develop in the future or years to come. Whereas, assignment without Goodwill is the conferral of title, interests, license, ownership as well as a complete profit of the trademark brand by the assignor to the assignee who carries forward the brand trademark but cannot sell anything other than what is directly associated to the brand, under the Trademark name.

Benefits of Assignment of Trademark

When an individual, business entity, legal organization etc. recognises and lays its claims and rights over a product, design or any other similar entity through a Trademark or a Service mark, it gains complete entitlement over it, to sell, transfer, license, charge or make amendments as and when it wishes to. When the owner wishes to sell or give up the license or ownership to another person, organisation or company, he will take the role of an assignor who holds the rights to impart with the business and the trademark, partially, wholly, with or without goodwill. After calculating and measuring the pros and cons of the action that the assignor shall take, the assignee is required to produce the respective things.

The assignment of the Trademark, helps the current owner, the one who transfers the license and interests of the business and hence the trademark too, materialise the brand name and value, by selling the ownership or proprietorship, for a good price, to someone who can be an efficient handler of the same, thereafter.
The one who is assigned the Trademark, and ownership of the assets, interests and license of the business, can exercise control and build on an existing brand, and seek profits by the virtue of it.
The presence of a written agreement helps settle any dispute, in the furtherance of the assignment of Trademark, be in the immediate future or years to come, as both expand their businesses.

Pre-Requisites for Assignment of Trademark

The assignment of a Trademark cannot be a verbal commitment or promise. It should be legally formularised in a writ and should be discussed with the assignee and the assignor, both of whom shall be acquainted in the event of any changes.

The assignment of a trademark necessitates the existence of two entities, organisations, businesses or individuals, one of who is the surrendering owner or the current owner of the license or trademark, and the other who shall be conferred the titles and interest and ownership, partially, wholly, with or without goodwill. According to Section (2) (1) of the Trademark Act of 1999, the two parties shall be named the assignor and the assignee.

Before the trademark assignment can commence, the assignor should be sure of the unconditional surrender of partial or whole of his business interests under the trademark assignment. They should only enter the litigation processes after being sure about the conferral of interest and titles involved in a general Trademark assignment.

The rates of the Assignment of Trademark should be discussed beforehand with the assignee, and the assignor should make thoughtful inception to the amount that looks appropriate for the assignment of a trademark to the concerning body, business, entity, enterprise or legal organisation.

Process of Assignment of Trademark

The entire process of Assignment of Trademark is gone about through a legal setting, with chronological legal setups, that finalize and establish whichever type of legal assignment of Trademark, that both parties have finalised on, depending upon the proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.

To legally transfer or confer the license and rights of the business, the assignment of trademark needs to be applied for. The assignor or the one who presently owns the license and trademark could apply for the Assignment, and so could the Assignee. There’s the provision for both parties to apply together. This results in the issuing of a form TM-P. the form TM-P should be issued within 6 months from the date the assignment of the Trademark had been officiated. The registrar files for the Form TM-P and takes it from there.

A copy of the form with specified details, regarding the name of the assignor and assignee parties, the date and time of the official assignment of trademark, photographs, and signatures consenting to the deal, is also retained with the registrar as well as sent forward to be submitted at the registrar of Trademarks.

Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

The assignor should in clear words hand over the pre-determined and discussed deal, without any self-made changes that the assignee is not familiar with from before, and officially assign the trademark.
It should also mention if this Assignment of the trademark could be continued by legal heirs and remain lawfully relevant and effective
The witnesses and partakers (assignor and assignee) should provide their signatures, and identity proofs and mention the date and time of the Assignment of Trademark.

Documents Required for Assignment of Trademark

The assignor and assignee should be able to produce the following documents for the formularization of the final assignment of the trademark, and it is imperative to procure the documents during the legal processes they’re involved in to enter a Trademark assignment agreement.

Trademark certificate.
NOC that is signed by the current proprietor, or assignee.
Identity proofs of both parties involved and of respective witnesses too
A list of dos and don’ts, which officially state what is permissible for the future owner t do with the Trademark (legally inheritable or not, assigned with or without goodwill etc.)

Claiming proprietorship over products or designs and services is highly beneficial because it prevents infringement of product and service rights as item, as the product is directly reinstated with its owner at all times till only he wishes to decide an assignment of Trademark. Trademark registration and service marks help a product stand out and remain distinguished from the others in the field and not get addlepated with random claimers and profit-makers over the same. To know more about this, you can get in touch with the experts of Vakilsearch .

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Trademark Act

Trademark assignment in India : with reference to transmission and assignment agreements

This article is written by Pradhnya Deshmukh, pursuing a Certificate Course in Trademark Licensing, Prosecution and Litigation from LawSikho .

Table of Contents

Introduction

Trademarks are intellectual property which initially gained popularity during the industrialization era of human development. With manufacturing processes getting more efficient with each technological and scientific research and innovation, competition in the market became stiff. Traders and manufacturers began to use unique symbols and words to identify and differentiate their goods from that of other similar goods being sold in the market. It is a misconceived notion that trademarks, per se, is a new legal concept. In the 19th Century, bakers found an unexpected blank canvas in the plain and taught round bread doughs. The bakers started using unique scoring techniques to distinguish their bread loafs from that of other bakers. The French scientist Vaudry appreciated the “breads with cuts on their surface” as an artistic creation backed by science causing an improvement in the appearance of the bread.

This article discusses assignment of trademarks in India with respect to the ways in which this can be done, its limitations, documents required for assignment agreement registration, fees and costs, and registrar’s discretion.

What are trademarks

Trademarks are artistic symbols, words, phrases or combination thereof, used to identify and distinguish certain goods or source of services from that of other similar goods or services available in the open market.

In India, trademarks are governed under the Trade Marks Act, 1999 ( “the Act” ) and are defined under Section 2 (zb) thereof.

To know more about Trademarks please visit

Nature of trademarks

Trademarks are assets or property with its nature similar to that of other physical properties such as land or house. It is pertinent to note that under the 1999 Act trademarks owners do not have to mandatorily register their marks to be considered the rightful proprietors of their trademarks and even unregistered trademarks can be assigned or transmitted. A trademark or brand owner has the rights to sell, license, assign and transmit its asset and its rights with respect to the said asset.

What is the ‘assignment’ and ‘transmission’ of Trademarks

Assignment of trademarks takes place when there is a transfer of ‘ownership’ of the mark from one party to another with or without goodwill of the business. In India, in case of assignment of registered trademark, such assignment is required to be recorded in the register by filing Form TM-P (Application for Post registration changes in the trademarks). (Form available here http://www.ipindia.nic.in/FORM-TM-P.pdf ) along with the prescribed fees. In case of unregistered trademark, all assignments must be registered on Form 23 (Form available here http://www.ipindia.nic.in/TM-23.pdf ) or Form 24 (Form available here http://www.ipindia.nic.in/tm-24.pdf ) before the Registrar of Trademarks.

Assignment of trademarks is conducted by way of a properly executed Trademark Assignment Agreement signifying the transfer of the mark from one person or entity (owner) to another party.

Transfer of rights by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment, is also as transmission of trademarks under Section 2 (1) (zc) of the Act.

Provisions of Section(s) 37 to 45 under Chapter V of the Act postulate the form and procedure of assignment and transmission of trademarks in India.

Various ways in which assignment agreements can be executed

Complete Assignment – All rights in the trademark as transferred to another entity including the rights to earn royalties etc.
Assignment with respect to specific products or services also known as Partial Assignment – The transfer of ownership is restricted to the type of goods or services agreed upon by the parties.
Assignment with goodwill – All rights and value of the trademark as associated with the goods or the services are transferred. Herein, the assignment is such that the rights and value are transferred not only with respect to the class of goods the trademark was previously benign used for. The party receiving the ownership of such trademark is free to use the such trademark for any class of goods. (under Section 39 of the Act).
Assignment without goodwill also known as gross assignment – All rights and value of trademark are transferred to the assignee (buyer) without the transfer of right to use such trademark for the class of goods it was previously being used for by the original owner of the trademark. For e.g., Where the trademark “LOVEKART” was being used for gift box delivery services, any assignment without goodwill of the same would not allow the assignee to use such trademark “LOVEKART” for gift box delivery services. The assignee may use with respect to any other class of goods or services and has to create a separate goodwill in the same. (under Section 39 of the Act).

Unregistered trademarks assigned without goodwill restrict the assignee’s right to protect the trademark against passing off actions. Unless, there is a registration of the trademark, no enforceable rights shall be within the scope of the assignee.

Limitations of trademark assignment under the 1999 Act

Creation of exclusive rights in more than one person with respect to same or similar goods or services including allied and cognate class of goods and services is restricted since it would create confusion in the minds of the general public with average memory.
Assignment to different people to use the marks in different parts of the country is also restricted.
Assignment to different people using the mark in different parts of the country together is also restricted.

Parameters to consider in drafting of an effective assignment agreement

The Assignment and the obligations mentioned therein must not detrimentally affect the rights of the owner.
Whether the assignment is with or without goodwill must be expressly mentioned.
The drafting of the said agreement must show a clear purpose of the transaction and the clauses of the said agreement must be in flow of the said purpose.
The geographical scope of locations where the rights and value in the trademark would be possessed by the assignee must be expressly mentioned.
Whether the trade dress (if any) is also being transferred along with the trademark must be expressly mentioned.
If the trademark being assigned includes the name of any person, living or deceased, a written consent from such person (or their representative) must be procured.
The transfer of right to sue and collect damages for past and future infringements must be mentioned.
The Agreement must be in writing. Oral transmission is not recognised in India.
The Agreement must clearly identify the parties involved i.e., the owner (assignor) and the buyer (assignee).
There must be a clear indication of the nature and value of the consideration for which the ownership is being transferred for.
The date and day of assignment to be mentioned clearly is of utmost importance in order to prevent any complications in case disputes concerning the same arise in future.
Relevant application or registrations being transferred must be clearly mentioned rather than merely stating agreement for transfer of trademarks in ownership of the assignor.
Agreement must be duly executed i.e., it must be notarized, stamped as per the applicable Stamp Act, stamp duty.
Signatures and Witnesses along with the date and place of execution must be clearly provided.
Whether or not the said agreement would be binding on the legal heirs shall be duly mentioned.
Any provision for co-operation and assistance to assignee by the assignor in enforcing, recording or taking any legal action in the near future must be duly mentioned to be agreed upon. Moreover, the party who shall bear the expenses must also be duly specified.

Documents required to be attached with trademark assignment agreements

Certificate of Trademark Registration or pending applications including, domain names. (Where the domain name is not registered as a trademark, a copy of invoice indicating proof of ownership of the trademark may be attached)
Acknowledgement slip from the assignor for receipt of consideration from the assignee for trademark assignment which is duly signed, stamped and notarized.
No Objection Certificate from the assignor which is duly stamped and notarized.
No Objection Certificate from the assignee which is duly stamped and notarized.
Where either one of the parties involved is a Company, a Board Resolution on Company’s letter head approving the assignment agreement and authorizing any representative to deal with the said trademark assignment which is duly stamped and notarized.
Where the trademark is registered, Form TM-P must be filed along with the governmental fees of Rs 9,000 for each trademark, if filed online or Rs 10,000 if filed offline.
Where the trademark is registered, a Power of Attorney to authorize the Trademark Agent/Attorney to file the subsequent proprietor by way of assignment must be filed along with governmental fees of Rs 900 for each trademark if filed online or Rs 1000 for each trademark if filed offline.
Where the trademark is pending registration, Form TM-M (Form available here http://www.ipindia.nic.in/FORM-TM-M.pdf ) for correction of clerical error or for any miscellaneous function under Rule 37 of the Trade Marks Rules, 2000 must be filed along with governmental fees of Rs 900 of each pending trademark if filed online or Rs 1000 for each trademark if filed offline.
Where the trademark is pending registration, Power of Attorney in Form TM-M to authorize a Trademark Agent/Attorney representing the assignee must be filed. This document may be required where the assignee already has a Trademark Agent/Attorney.

Assignment where transmission of money is taking place outside India

Where there is any law in force regulating the transfer of money outside India, the Registrar of Trademarks shall not register the title of the assignee except on production of the permission or consent of the authority specified under the applicable law in force for such transmission.

Discretion of the registrar

The trademark Registrar may ask for production of an Affidavit on Form TM-18 (Form available here http://www.ipindia.nic.in/form-TM-18.pdf ) for the verification of title along with the proof of title for his satisfaction.

Registrar’s certificate or approval

Under Section 40 (2) of the Act any person desiring registrar’s approval certificate must make an application under Form TM-P and attach align with it the statement of case (background facts) and copy of any instrument/proposed instrument affecting the assignment. The registrar may ask to furnish proof of title or any further evidence thereof. In cases where the statement of case is amended, three copies of the same in its final form must be filed with the registry.

Fees for assignment of trademarks in India

Where the trademark assignment is done within six months from the date of acquisition of proprietorship then statutory fee would be Rs 5,000.
Where the trademark assignment is done after the expiry of six months but before twelve months from the date of acquisition of proprietorship then the statutory fee would be Rs 7,500.
Where the trademark assignment is done after twelve months from the date of acquisition of proprietorship then the statutory fee would be Rs 10,000.

Trademark Assignment Agreements facilitate innovation and gain benefits of such future creations and is essentially a subset of Technology Transfer Agreements which essentially covers all assignment agreements related to the Intellectual Properties.

Often the assignee attempts to ride upon the rights of the owner by demanding same or similar rights to that of the assignor. This is where precise and sound drafting of the trademark assignment agreement becomes essential and demands assignment as per intention of the parties.

Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.

LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join:

https://t.me/joinchat/J_0YrBa4IBSHdpuTfQO_sA

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Assignment of Trademark

GENERAL UNDERSTANDING:

As physical properties are transferred, the same way trademarks are also transferred. This transfer of trademark is called Assignment of trademark. In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person.

Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other person. The transferring party is called as “Assignor” and the receiving party is called as “Assignee”.

STATUTORY DEFINITION:

Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing by the act of the parties concerned;

WHO CAN ASSIGN A TRADEMARK:

As per section 37 of the Trade Marks Act, 1999, the person entered in the register of trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to give effectual receipt of for any consideration for such assignment.

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the Goodwill of the business concerned either in respect of all the goods or services in respect of which the said trademark is registered or of some of the goods or service.

Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with or without the Goodwill of the business concerned.

TYPES OF ASSIGNMENT:-

1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee, the value, rights and entitlements also, as associated with a trademark with respect to the goods or services already in use by the assignor. After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to clothing and footwear alongwith the Goodwill associated with trademark “TM”.

In this case, Mr. X has also assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear as well as for other goods or services. Therefore, Mr. Y is eligible to use the said trademark “TM”, for clothing and footwear including other goods or service dealt by Mr. Y.

2. Assignment without the Goodwill of Business: Where an assignor assigns to the assignee, the right and entitlements in a trademark with respect to the goods or services which are not in use by the assignor. In other words, where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with trademark “TM”.

In this case, Mr. X has not assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear. Therefore, Mr. Y is not eligible to use the said trademark “TM”, for clothing and footwear. Thus, in case, Mr. Y wishes to use the said trademark “TM” in relation to other goods or services then he will be required to create separate Goodwill for trademark “TM” for such other goods or services dealt by him.

RESTRICTION ON ASSIGNMENT OF TRADEMARK:-

1. Parallel use Restriction: Where assignment results in creation of exclusive right in different persons, in relation to same or similar goods or services and the use of the trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right in relation to same or similar goods or services, in different person is not allowed. This prevents the parallel use of a trademark by more than one person concerned in relation to same or similar goods or services. (Section-40)

2. Multiple Territorial use Restriction: Where the assignment results in creation of exclusive right, in different person in different parts of India, in relation to same or similar goods or services. Thus, assigning of scattered right in different parts of India is not allowed. (Section-41)

PROCEDURE FOR ASSIGNMENT OF TRADEMARK:

Relevant Form: TM-M

Statutory Fees: Rs. 1,000/- (offline filing)

Rs. 900 (online filing)

Relevant Form: TM-P

Statutory Fees: Rs. 10,000/- (offline filing)

Rs. 9,000 (online filing)

Relevant Form: TM-M

Statutory Fees: Rs. 1,000/- (offline filing)

Rs. 900 (online filing)

Relevant Form: TM-P

Statutory Fees: Rs. 10,000/- (offline filing)

Rs. 9,000 (online filing)

First file TM-P (within six months of assignment or extended period of three months) for obtaining direction of registrar for “advertisement of assignment without goodwill” alongwith statutory fees of Rs. 3,000/- (offline filing) or Rs. 2,700/- (online filing). Secondly, file the above said TM-M or TM-P, as the case may be.

REGISTRATION OF ASSIGNMENT OF TRADEMARK:

1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall apply for registration of assignment before the Registrar of trademarks. (section 45)

2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to him in respect of goods or services for which the assignment has been made. (section 45)

3. Where the validity of assignment is in dispute between the parties, the Registrar may refuse to register the assignment until the rights of the parties are determined by the competent court. (section 45)

4. Registrar of trademark shall dispose of the application for registration of assignment of trademark within a period of 3 (three) months from the date of receipt of application. (rule 76 of Trade Marks Rules, 2017 )

5. Registrar may, where there is reasonable doubt about the veracity of any statement or any document furnished, may call upon any person who has applied to be registered as proprietor of a registered trademark to furnish such proof or additional proof of title as the Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)

6. Where in the opinion of the Registrar any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899 . (rule 78 of Trade Marks Rules, 2017)

7. Where the Registrar has allowed the registration of assignment, then there shall be entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-

a) the name and address of the assignee;

b) the date of assignment;

c) where the assignment is in respect of any right in the trademark, a description of the right assigned;

d) the basis under which the assignment is made; and

e) the date on which the entry is made in the register.

RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:

The assignor terminates to have his rights, title or any interest in the trademark, the moment assignment deed is executed in favour of the assignee, irrespective of the fact that the name of the assignee has not been updated in the record of the Registrar of trademarks.

In the matter of Classic Equipments Pvt. Ltd. Vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed as follows:

“Once an Assignment Deed has executed, the Assignor ceases to have any right, title or interest in the property assigned. It is not open to the Assignor to cancel the assignment by means of communication”.

RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT REGISTRATION IS PENDING:

Though as per section 45 of the Act, it is mandated that the assignee shall apply before the Registrar of the trademarks to register his title. But this does not mean that recording of assignment of registered trademark asserts all rights or titles or interest in the assignee.

The reason behind this understanding are the opening words of section 45 of the Act, which says “where a person becomes entitled by assignment or transmission of a registered trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by way of assignment or transmission of a registered trademark followed by registration of assignment of a registered trademark. Thus right in assignee does exist even before the registration of assignment.

In the matter of M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And…. on 4 th December, 1990: AIR 1992 Delhi 4, 1992 (22) DRJ 24 was observed as follows:

“It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.”

The assignee of a trademark is also entitled to file a civil suit, even though the recording of assignment of registered trademark is pending before the registrar of trademarks. Moreover, section 45 does not confer any title over the trademark assigned. Instead the registration granted under section 45 is only proof of title of the trademark of assignee or the person who acquired it by way of assignment.

IMPORTANT KEY POINTS

√ Assignment is to be in writing;

√ Registered or unregistered both type of marks can be assigned;

√ Assignment can be with or without the goodwill of the business;

√ Event of assignment asserts the rights and title in an assignee not the registration thereof;

√ Registration of assignment is only prima facie proof of title of trademark;

√ Rights in an assignee exists even before registration of assignment of trademark.

Conclusion: –

Assignment of trademarks allows the Proprietor thereof to en-cash their intellect, efforts, time and money. It is equally important to register the assignment of trademark, since on registration the details of the assignee are updated in the register of trademark, this serves as a notice to public at large. Moreover, preparation of assignment agreements are also important as it involves rights, entitlements, interests and obligation including the commercial terms between the assignor and the assignee.

Disclaimer: The entire content of this document has been prepared as per the relevant provisions of the Act and rules made thereunder, applicable at the time of preparation. Though proper care has been taken to ensure accuracy, completeness and reliability of the information provided therein. The users and readers agree that the information provided in this document is not professional advice. Therefore, we assume no responsibility therefrom. Further, this write up shall not be considered as solicitation in any manner.

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Trademark Assignment

Trademark Assignment Deed

Documents Required

Assignment of Registered & Unregistered Trademark

Trademark Licensing & Assignment

Sonam Geda & Company

IPR Services /

Overview of Trademark Assignment

Assignment means transfer and Trademark Assignment is a method of transferring the ownership and proprietary rights of the trademark to a 3rd party with or without the goodwill of the business. It is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party ("assignor") transfers to the receiving party ("assignee") its property rights in the mark.

As we all know that trademark is intellectual property belonging to the owner, as other property are often sold for price so in the similar approach a trademark can be sold for price.

Usually, Trademark Assignment is initiated when the entire business is sold off, or the company owns many trademarks for brands, and wanted to sell a few of them.

It takes about six to ten months from filing an application for trademark assignment for getting of approval from the Registrar of Trademarks.

As for selling of any property being car or house etc. , a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

Important points to be included in trademark assignment deed:

The most important clause to be included in Trademark Assignment Deed is Selling Price or Consideration for which transfer is made and stamp duty is calculated on the same consideration.
Geographical area in which assignee or purchaser can use the brand name
Details for whether transfer is with Goodwill or without Goodwill

Types of Assignment

A trademark can be assigned in the following different ways: • Complete Assignment • Partial Assignment • Assignment with Goodwill • Assignment without Goodwill

Complete Assignment – When all the rights vested in a trademark including rights to further transfer, royalties, etc., are legally granted to another entity/person is known as complete assignment of trademark.
Partial Assignment – Under the partial assignment there are certain restrictions on the transfer of ownership to certain products or services only and the owner of the trademark has the right to further transfer the trademark and earn its royalties. o For example-A, owner of a tea and a biscuit brand, transfers proprietary rights only related to the tea brand and retains the rights to transfer over the biscuit brand. It is known as partial assignment.
Assignment with goodwill – When the owner transfers all the rights and royalties of the trademark related to all product or service which are owns by owner, is known as assignment with goodwill.
Assignment without goodwill – when both the parties i.e. seller and buyer can use a same trademark but for different products or services. Owner of trademark does not allow the assignee to trade in the products in which he used to.

In any of the above cases, the assignment or transfer of the trademark must be recorded with the Registrar of Trademarks.

Document Required for Trademark Assignment

In regard to the Trademark Assignment, following documents are needed:

Assignment Deed
Affidavit of the Assignor
ID Proof of the Assignor & Assignee
Assignment of registered trademark: Registered Trademark can be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.
Assignment of a unregistered trademark: Unregistered trade mark may be assigned or transmitted with or without the goodwill & the ownership of the trademark can be transferred during the examination of the trademark application.

Advantages of Trademark Assignment

Every assignment of trademark is entered in the records of registry and hence already is a proof of ownership to the trademark.
Trademark assignment takes lesser time than to register a new brand name.
During a Trademark Assignment, both the parties are in advantageous position as the assignor gets a good amount for brand name and the assignee will enjoy the already established brand which is known in the market.

Difference between Trademark Licensing & Trademark Assignment

Licensing and Assignment of trademark are seem to be same but there is lot of difference between two.
Trademark assignment is a selling of trademark or transfer of an owner’s rights, title, and interest in a trademark or service mark to others and it makes in change of ownership. Whereas, in trademark licensing, few restricted rights are granted to use the trademark with no change in the ownership are given to a third party and licensing of trademark is a permission given to use the brand name for limited period of time.

Limitation For Trademark Assignment

A trademark can be jointly owned by multiple or more than one applicant but there is a restriction on trademark assignment is that Trademark cannot be assigned if the exclusive rights of the trademark vests in more than one person.

Frequently Asked Questions

What is trademark assignment, what is trademark assignment deed.

As for selling of any property being car or house etc. a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

What should be included in Trademark Assignment Deed?

In how many ways a trademark can be assigned, which documents are required for assignment of trademark, how registered and unregistered trademark is assigned, what is limitation of trademark assignment, what is difference between trademark and different form of intellectual properties.

A detailed comparative chart of difference between various forms of intellectual properties can be found at the end of this page.

What are the advantages of Trademark assignment?

What is difference between trademark assignment and trademark licensing, difference in different form of intellectual property rights.

BASIS OF DIFFERENCE
PROVISIONAL PATENT
The Trademark Act, 1999 deals with registration and prevention of fraudulent use of trademarks.
The Copyright Act, 1957 provides for the registration and protection of copyright.
Registration and protection of Industrial Design is administered by the Design Act, 2000 and rules made there under.
Registration and protection of Patent is governed by the Patent Act, 1970 and rules made there under.
Trade Marks Act,1999
Copyright Act,1957
Design Act,2000
Patent Act,1970
It can include name, symbol, slogans, logo, and or image which identify the business/brand and it makes different from others.
Protection of original creative works like Music, Books, Articles, drawing, painting,maps,Photographs, Movies, Sculptures, sound recording, choreography, motion pictures,software etc.
Feature of pattern, configuration, shape, ornaments, composition of lines, or colors applied to any article, packaging and graphic symbols.
• Novel and original inventions such as machines, processes, manufacture, composition of chemicals and its improvement. • Encourage innovation and commercialization of technological advances.
• Novel and original inventions such as machines, processes, manufacture, composition of matter and its improvement. • Patent secures inventions that are useful for the world or to the public at large and has some productive use.
Creative or intellectual creations
Appearance of products
Inventions & Idea
Valid for 10 years but can be made perpetual by renewing it in every 10 years.
Copyright is valid for the lifetime of the author and 60 years after the death of author.
Validity of Design is 10 years from the date of its registration.
• Provisional Patent will be valid for 12 months from the date of filing application of Patent. • Documents has to file for permanent patent within 12 months otherwise it will ne abandoned.
Patent is valid for 20 years from the day the application is first made but it can’t be renewed.
10 years + Renewal
Lifetime + 60 Years
• Use within the applied class. • Protect it from anyone using without permission and give right to sell the brand.
• Copyright owner has authority to transfer the work by licensing, assigning, and other forms of transfers. • Right to reproduce the work, to prepare derivative works, to distribute copies, to perform the work publicly, and to display the work publicly. (depending on the type of work).
It gives authority to Use, make, sell, import, offer for sell the registered design.
Entitled to protect from copy of the invention or infringement of Patent.
It gives right to Use, sell, import, make with idea patented.
Brand w.r.t. product / services
Distribute copies & perform work publicly
Authority to Use, sell, import etc.
Protect from copy idea
Parle,Domino’s,Pizzhut,Spykar etc are the brand names.
Music, pictures, songs, software etc
packaging and graphic symbols, composition of lines etc.
New invention in pharmaceutical industry.
• New invention in pharmaceutical industry. • Certain computer programs may fall within the subject matter protected by both patents and copyrights.
Brand' "Nike", logos-the Nike tick
A copyrighted Book
™ is used when registration is under process. ® is used when Trademark is registered.
There is no symbol to represent Design
• There is no symbol to represent provisional Patent. • It would be able to use 'Patent Pending' on product any time in 12 months
No symbol is assigned to registered Patent.
Application for Trademark registration is made by business owners or owners of product.
Artists, Architect, Choreographers, Creative Professionals and Author.
One who creates design can apply for its registration.
Many inventors/businesses wish to patent their inventions even before they are finalised through a provisional patent.
Inventors and designers who have invented any original invention or invented with improved function can apply for its registration.
Artists, Creative Professionals
Separate application has to file for protection in different countries and hence only effective in India
Protection is available in most of the countries of the world.
Design protection is obtained by filing an application in each country/region of interest
It is a territorial right and therefore applicable within the territory of India and the separate patents required to be filed for each country where protection is required.
Territorial right
Most of countries
Trademark Registration usually takes 12-18 months to complete the process.
It takes nearly 4–8 months to get a copyright if there is no objection in application filed.Otherwise it takes nearly 1–2 years depending on the application type.
The time taken for design registration is as per the Design Act, 2000 and rules made there under.
Patent registration takes a 2-3 years for completion of process. But the owner can claim right over a patent from the date of applying provisional patent.
12-18 months
Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
All the things related to registration of Copyright are done by Copyright Office, Government of India.
Intellectual Property in India is governed by the Controller General of Patents , Designs & Trade Marks (CGPDTM).
Copyright Office

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Assignment of Trademarks in India

Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an 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. In other words, it is transferring of proprietary rights in the property of the proprietor. The manner in which an assignment can be made are as follows:

Complete assignment of trademarks

For example, A, owner of “xyz”, sells his brand to another through an agreement to B. After this, A does not retain any rights with respect to “xyz”.

Partial assignment of trademarks

In a partial assignment, the transfer of ownership is restricted to specific product or service only. The owner may retain the right to further transfer, to earn royalties etc.

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.

Assignment without goodwill

Procedure to record the assignment of trademark with the Registry:

Assignment of an unregistered mark:.

Assignment of a registered trademark:

In a case of assignment or transfer of a single trade mark:

if made within six months from the date of acquisition of proprietorship, then the official fee is Rs. 5000;
if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs. 7,500;
if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs. 10,000.

In case of assignment of more than one trademark:

if made within six months from the date of acquisition of proprietorship, then the official fee is Rs.5000 for the first mark and Rs.1000 for every additional mark;
if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs.7,500 for the first mark and Rs.1500 for every additional mark;
if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs.10,000 for the first mark and Rs.2000 for every additional mark.

From a practical perspective , this is what you need to incorporate in any assignment deed which involves trademarks;

1. The assignment deed must be in writing where the assignor’s name must be same as it is in the Register of Trademarks, i.e. the owner of the trademark;

2. It is absolutely necessary that the territorial extent of the assignment is clearly laid down; for example, if the assignee is based in India, then it is a must that the assignment deed contain a clause saying the assignment is for that particular region;

3. The next obvious thing is, the mark/marks that the proprietor wants to assign must be mentioned clearly;

4. The consideration that the assignee needs to pay should be mentioned as well; the standard phrase of “good and valuable consideration” wouldn’t hold good; The stamp duty has to be calculated on the basis of the consideration.

5. The effective date of the assignment must be laid down clearly;

6. The most important part of an assignment deed is to mention if the assignment is along with the goodwill or not.

This article has been authored by Durga Bhatt , an IP Law practitioner.

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Assignment of Trademark

Updated on : Jun 14th, 2024

Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.

The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.

Who can Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment

The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc.

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.

Partial Assignment

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand ‘ABC’ with respect to sauces.

Assignment with Goodwill of Business

The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor.

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.

Assignment without the Goodwill of Business

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.

Pre-Requisites for Assignment of Trademark

The trademark assignment should be in writing.
The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
The assignor should have the intent and must consent for the trademark assignment.
The trademark assignment should be for a proper and adequate consideration (amount).

Trademark Assignment Agreement

The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:

The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
The agreement should show a clear purpose of the transaction/assignment.
The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
The signatures and witnesses must be mentioned.
The place and date of agreement execution must be mentioned.
The date and day of the assignment along with the parties to the assignment must be mentioned.
The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.

Process of Assignment of Trademark

The process of assignment of the trademark in India are as follows:

The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
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 assignment must be advertised in such a manner and within the period 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.
Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

Documents Required for Assignment of Trademark

The following documents must be submitted to the registrar of trademark along with form TM-P:

Trademark assignment agreement.
Trademark certificate.
NOC from the assignor.
Identification documents of the assignor and assignee.

Restrictions on Assignment of Trademark

The Trademarks Act, 1999 provides the following restrictions on trademark assignment:

Parallel Use Restriction

The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.

Multiple Territorial Use Restriction

The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.

Benefits of Trademark Assignment

The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
The assignee obtains the rights of an already established brand due to trademark assignment.
The trademark assignment supports the assignor and the assignee to expand their respective businesses.
The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

Disclaimer: The materials provided herein are solely for information purposes. No attorney-client relationship is created when you access or use the site or the materials. The information presented on this site does not constitute legal or professional advice and should not be relied upon for such purposes or used as a substitute for legal advice from an attorney licensed in your state.

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Registration Of A Trademark Assignment: Mere Formality Or A Mandate?

Contributor.

Introduction

With the advent of technology and newer trends of merchandising and marketing, the protection of an intellectual property of a person has become a dire need of the day. Consequently, the title related to a trademark is also a quintessential of it. This title can be transferred to another person or legal person through assignment, merger, transmission etc.

As per the provisions of the Trademarks Act, any person who is getting a title on any trademark by way of assignment or transmission shall bring himself on records of the Trademarks Registry as the proprietor of the trademark by making an application in the appropriate form with the appropriate fee. Now, the question which arises here is that what will be the status and position of an Assignee who has not made an application for registering himself as the proprietor of the trademark or whose application for such a registration is pending before the Trademarks Registry? While taking actions against third parties for infringement or passing off of its trademark, Should he be allowed to enter into the shoes of the Assignor by virtue of the assignment deed? Or should he be restrained form taking any such actions as he is not the proprietor of the Trademark as per the records of the Registry? The question has been discussed in detail below under various heads-

Procedure Relating To The Registration Of Assignments And Transmissions:-

Assignment of a trademark occurs when the ownership of a mark as such, is transferred from one party to another whether along with or without the goodwill of the business. Assignment agreements pertain to the transfer of intellectual property rights from, the owner of the rights to another person or organization. Assignment is an important aspect of this act, as per the section 2(1) (b) of the Trademarks Act, 1999; assignment has been described as "an assignment in writing by act of parties concerned". Thus this clarifies that for the assignment of trademark, it is necessary for the agreement to be in writing and to be act of an assignor and assignee of their own volition and not a third party.

Further, in case of registered Trademarks, the Trade Mark Act 1999 under section 40 also puts certain restrictions on the assignment of a registered trade mark wherein there exist possibilities of creating confusion in the mind of public/users. Such restrictions are:

Restriction on assignment that results in the creation of exclusive rights in more than one person with respect to the same goods or services, or for same description of goods or services or such goods or services as associated with each other.
Restriction on assignment that results in different people using the trademark in different parts of the country simultaneously.

Discretion Provided To The Registrar Under Section 45 (2) Of The Trademarks Act, 1999-

As per section 45 of the Act, an assignment deed needs to be registered in the appropriate form with the Trademarks Registry in order to bring the Assignee as an owner of the trademark on records. The Section runs as follows-

(1) Where a person becomes entitled by assignment or transmission to a registered trade mark he shall apply in the prescribed manner to the Registrar to register his title. And the Registrar shall on receipt of the application and on proof of title to his satisfaction register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or tranmission to be entered on the register. Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court.

(2) Except for the purpose of an application before the Registrar under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs .

As per the provisions of Section 45 and Rule 68 of the Trademarks Act, 1999, an application to register the title of a person who becomes entitled by assignment or transmission shall be made in Form TM-24 or TM-23 as it is made by such person alone or conjointly with the registered proprietor. Further, as per the practices of the Indian Trademarks Office, an affidavit for no legal proceedings pending related with the trademarks which are subject of the merger is also to be filed on behalf of the transferee company. Now, in case of a merger, since a proprietor registered on record is no more in existence and hence an application for change in title shall be filed in the name of the transferee. The Registrar may require statement of case to be verified by an affidavit on form TM 18 and may call upon the person concerned to furnish such proof or additional proof of title as he may require for his satisfaction. On proof of title to his satisfaction, the registrar will register him as a subsequent proprietor of the trade mark in respect of the goods or services and shall cause the particulars of the assignment or the transmission to be entered on the register. Once the trademark is assigned with goodwill, the assignor cannot in the eyes of law have any interest in the trademark assigned and the assignee alone, as a person interested in the trademark assigned, can represent in opposition proceedings as a party to protect its interest.

Position Of A Non-Registered Assignee In India

The law empowers the registrar to refuse to register the assignment or transmission when the validity of an assignment or transmission is in dispute between the parties, until the rights of the parties have been determined by a competent court [section 47 (2)]. The Registrar's refusal to register the assignment or transmission will naturally arise only before the actual change is effected in the register. The assignor or any other person may complain that the assignment is invalid or that it has been procured from him under circumstances entitling him to repudiate that transaction. In such circumstances the registrar cannot be expected to decide upon the validity of the assignment where it is challenged before him.

In Radhakashan Khandelwal vs. Asst. Registrar of Trade Marks 1 - The Delhi high court held that "it is true that the rules do not expressly require a notice to be issued or a hearing to be given to the party adversely affected by the order when an application on form TM 24 is made before the registrar, but there is in eye of law a necessary implication that the party adversely affected should be heard before an order for the removal of his name can be made against him.

Moreover if no entry has been made in the register, the document or instrument will not be admitted in evidence by the registrar or the appellate board or any court except for certain purposes as stipulated. The Registrar, or the concerned Authority as the case may be, has been given a discretion under this section to admit or not admit an assignment deed for which no application under Form TM-24 has not been made as an evidence of title of the assignee. Such a situation usually arises in cases where actions against third parties are involved. Very often the question as to the maintainability of a suit initiated by an unregistered assignee against the third parties has been dealt with by the Courts-

In Cott Beverage Inc., A Georgia ... vs. Silvassa Bottling Company on 7 October, 2003 2 - In this case, section 44 does not create a bar for filing a suit by the assignee whose application is pending disposal for registration. Discretion, however, is vested in the Court under Subclause (2) of Section 44 of the Act, whether to permit the said unregistered document in evidence or not. At the same time, it cannot be said that the procedure of registration of assignment is a mere formality. Section 44 has been incorporated merely as a safeguard by the Legislature in order to avoid the multiplicity of the proceedings and also in order to ensure that the various other laws prevailing in the country are safeguarded while registering the assignment. Thus, the grant of registration of assignment or transmission cannot be said to be a mere formality and on a conjoint reading of the provisions it will be apparent that the Registrar has to be satisfied after going through the application, which has to be filed in the prescribed form giving various particulars. In the present case, non-registration of the assignment will have to be considered as an important factor.

In Shaw Wallace & Co. (supra) 3 case- an application for impleadment of the assignee was under consideration. This court held that till the time the Registrar of Trade Mark, does not record the title in favour of the assignee, the deed of assignment cannot be admitted in evidence. However, the assignee was still impleaded as a party with direction to file the registration as and when accorded by the Registrar.

The above view of the Courts has also been contravened by other Courts. Emphasizing the fact that even if the assignment deed is not registerd with the records of the Trademarks Registry, it, itself is a valid instrument and hence permissible to be taken as an evidence of the assignee's title on the trademark.

IN Mohammad Zumoon Sahib vs. Fathimunnisa 4 , it was held that the " registration of assignment is not a condition precedent to an action for infringement by the assignee and an assignor of registered trademark will not be disentitled to an action on infringement on ground that assignment was not registered." The Madras court held that the law prescribes a procedure for the assignee or the representative to have registration of this title. The fallacy in the argument is that it is this registration by the Registrar under section 35(1) of the act that confers title .The title already exists in the legal representative and on proof of such title to his satisfaction; the registrar registers him as the proprietor of the trade mark. The plaintiff to the suit for infringement, whose name was not entered as subsequent proprietor, was allowed to maintain the suit on proof of prima Facie title to the mark.

Further, in Hindustan Lever Ltd. v. Bombay Soda Factory 5 , it was held that " the plaintiff could not be non suited merely because the change in the name of the registered proprietor had not been effected by the time suit was instituted. Registration of the name of the proprietor does not confer title on him. it is merely an evidence of his title. The plaintiff –company was the owner of the trademark in question at all times ."

In the case of Modi Threads Ltd. v. Som soot Gola Factory and another, 6 it was held that despite non registration of the application the civil suit was maintainable. The court held that it is true that the plaintiff's application for getting transferred and registered trade mark in its name in the office of the registrar is still pending but that does not debar the plantiff to protect the violation of the aforesaid trademark at the hands of unscrupulous persons by filing an action in court of law for injuction.so this is clear prima facie for the court.

Under sub section 2 of section 45 of Trademarks Act, the Registrar or the Competent Authority as the case may be, has been given discretion to admit or refuse to admit an unregistered deed of assignment as a proof of title of the assignee. However, another important thing the courts show that even without registration of assignment, a suit by the assignee is maintainable. If necessary, the suit may be stayed to enable the assignee to register the same. Therefore, it is an obvious fact that after an assignment or merger or transmission as the case may be the assignee has to step into the shoes of the assignor for purposes of any legal proceedings which are pending or indisposed.

Assignment agreements are of considerable importance in IPR since they allow the intellectual property owners to transfer their intellectual property for commercial returns, ensuring intellectual property can be used for monetary gains as well. So issues relating to ownership of IPR must be carefully considered .Though the law provides safeguards, but the slight ambiguity present in the Indian Trademarks Law on this point shall be dealt with by the legislature.

Ayush Vats Intern(Amity law school, Noida) 5 th year(2010-2015)

1 AIR 1969 Delhi 324, ILR 1969 Delhi 1227

2 2004 (29) PTC 679 Bom

3 105 (2003) DLT 586, 2003 (27) PTC 63 Del, 2003 (3) RAJ 224

4 (1960) 1 MLJ 270

5 AIR 1964 Kant 173, AIR 1964 Mys 173, (1964) 1 MysLJ

6 AIR 1992 Delhi 4, 1992 (22) DRJ 24

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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Trade Mark Assignments

A registered trade mark is an item of personal property of the registered owner. As such the registered owner can transfer the ownership of a registered trade mark to another person or entity. This person or entity is referred to as the Assignee. A trade mark assignment agreement is used to transfer the ownership of a registered trade mark to the Assignee.

Once the terms of the trade mark assignment agreement have been agreed between the registered owner and the Assignee, the change of ownership needs to be recorded on the Trade Marks Register.

Unregistered trade marks can also be transferred; however the agreement transferring unregistered trade marks is often more complex.

The need to transfer the ownership of trade marks often arises in the context of a sale of business, in disputes about brands and in re-organisations of corporate groups – often where a company has been established for the sole purpose of holding the intellectual property rights (including registered and unregistered trade marks). Such companies are often referred to as IP holding companies or IP HoldCos for short.

The circumstances surrounding the transfer of a trade mark will determine what rights and obligations will be included in the trade mark assignment agreement. For example, if the Assignee is paying a large sum of money for a trade mark then it is likely that the Assignee will want the trade mark owner (or the Assignor) to make a variety of promises (also known as warranties) about the trade mark being transferred under the assignment.

Where the Assignee of a registered trade mark may not be the entity that will use the trade mark, additional advice and documentation may be required to ensure that the trade mark registration does not become vulnerable for removal from the trade marks register for non-use or other grounds. In this regard, licences and procedures ensuring the trade mark is used under the control of the Assignee will be required and need to be adhered to.

The transfer of ownership of a registered trade mark will also need to be recorded on the trade marks register. Failure to do so does not undermine the Assignee’s ownership of the registered trade mark, but it may affect the Assignee’s ability to sue for infringement of the trade mark and affect the financial compensation that it may claim.

As with the transfer of any IP, the transfer of a trade mark for money may attract a capital gains tax liability on behalf of the seller, and can even attract stamp duty in some instances.

Where the trade mark is a logo or contains an artistic work, the copyright in that logo/artwork will also need to be transferred to the Assignee, as well as due diligence relating to whether the owner of the registered trade mark also owns the copyright in the logo/artwork. In this regard, provisions transferring the copyright in such logo/artwork can be added to the trade mark assignment agreement.

For ease of use we have packaged up our standard trade mark assignment agreement as a paid download at a price which includes one hour of professional time.

Call us today if you are SELLING or TRANSFERRING any of your trade marks (registered or unregistered).

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Kedar Naniwadekar --> 29 October 2015

Calculation of stamp duty for trademark assignment deed

What is the stamp duty for Trademark Assignment Deed and how is the stamp duty calculated for the same? Also what is the procedure for registration of Trademark Assignment Deed? I have been given 2 different advices 1) the stamp duty shall be 0.1% of the total value if the value is below Rs. 10 Lakhs and 0.2% if the total value is above Rs. 10 Lakhs; and 2) the stamp duty shall be 3% of the total value.

1 Replies

Priyanka Kulkarni (Advocate and Intellectual Property Attorney Solicitor (England and Wales) (NP)) --> 30 October 2015

Being lawyer, first you need to check the relevant jurisdiction and decide which stamp Act applies e.g. Maharashtra Stamp Act (previously Bombay Stamp Act) and then read the relevant provision.

You may contact me at [email protected]

Priyanka Kulkarni

IP Attorney and Solicitor of England and Wales( NP)

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COMMENTS

What Is the Stamp Duty for Trademark Assignment?
The stamp duty for any trademark assignment deed is 5% in Delhi. Nevertheless, talk to local authorities for up-to-date rates. Is stamp duty payable on a deed of assignment of IP rights? Yes, stamp duty is levied on a deed of assignment of IP rights (including trademarks). The precise amount depends upon the IP value and state-specific regulations.
Stamp Duty Requirements for Trademark Assignment in India
The market value of the assigned trademark is used to determine how much stamp duty is due for trademark assignment. On form TM-P, a request is submitted to register the title of a person who gains entitlement through the assignment. The state government determines the market value, which differs from state to state.
What Is the Stamp Duty for Trademark Assignment?
If you are not a start-up, small enterprise, or individual you will have to pay ₹ 9,000 for lodging an application electronically and ₹10,000 if you file in person with the Trademark Registrar. Individuals, small enterprises, or startups must file with the TM application by paying a fee of ₹ 4,500 for e-filing or ₹5,000 for filing by ...
What is the Stamp Duty For Trademark Assignment?
The amount of stamp duty for trademark assignment is based on the assigned trademark's market value. State governments determine market value, which varies from state to state. Form TM-9: Utilized to initiate registration requests for an individual's title following an assignment.
PDF Intellectual property right assignments Q&A: India
Under the Trade Marks Act, the assignor must have the power to assign the trade mark and give effectual receipt for any consideration received for the assignment. In addition, the assignor must provide an affidavit to the Trade Marks Office confirming that the trade mark is free from any encumbrances and not subject to legal disputes.
Trading Trademarks
For example, if the value of the overall assignment was USD 10 million, in the absence of an India-specific consideration amount, the stamp duty would be payable on the entire sum of USD 10 million. As mentioned above, the transfer/assignment will not be enforced in India without the payment of the requisite stamp duty, so it becomes extremely ...
Stamp Duty for Transfer or Assignment of Intellectual Property
"(d) Transfer or assignment on sale of any copyright, trade mark, patent or any similar right." That means that transfers, and assignments (pursuant to sale) of copyrights, trade marks, patents and "other similar rights", which are generally known as "intellectual property rights (IPR)" would be exempted from stamp duty.
Trademark assignments: Transferring ownership or changing your name
Answer "yes" to the question at the beginning of the form that asks if you need to change the owner's name or entity information. Enter the new name in the "Owner" field in the "Owner Information" section of the form. Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate.
Assignment of trademarks in India
Assignment of a trademark 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. In other words, it is ...
Trademark Assignment Agreements in India
Th Act also provides for the assignment of an unregistered trade mark, with or without the goodwill of the business concerned. ... Here, it would be relevant to mention that as per the provisions laid down under the Indian Stamp Act, a stamp duty @ 5% is payable on an instrument based on the consideration amount mentioned. Proof of Title ...
Trademark assignment procedure
The procedure for applying for a trademark assignment is narrated hereunder-. 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. Filing of Form TM-P.
Why Does a Trademark Assignment Need to Be Notarised?
The notarisation of the assignment is in the benefit of the assignee. Also, notarising is important so that it is established that there is no possibility of wilful document fraud relating to the assignment. And so the assignment must be notarised on the right stamp duty. Further, the assignor must also submit an affidavit which is notarised ...
What are the Documents Required for Assignment of Trademark?
The registrar files for the Form TM-P and takes it from there. A copy of the form with specified details, regarding the name of the assignor and assignee parties, the date and time of the official assignment of trademark, photographs, and signatures consenting to the deal, is also retained with the registrar as well as sent forward to be ...
Trademark assignment in India : with reference to transmission and
Agreement must be duly executed i.e., it must be notarized, stamped as per the applicable Stamp Act, stamp duty. ... Where the trademark assignment is done after the expiry of six months but before twelve months from the date of acquisition of proprietorship then the statutory fee would be Rs 7,500.
Assignment of Trademark
In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person. Thus, Assignment of trademark means transfer of Owner's title, rights, interest and benefits to other person. The transferring party is called as "Assignor" and the receiving party is called as "Assignee". STATUTORY ...
PDF Assignment of Trademark
ereby agree as follows:Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in and to the Trademark application and/or registrations, together with (i) the benefit of any use of the Trademark by the Assignor (ii) the goodwill of the ...
Trademark Assignment
Trademark Assignment Deed. As for selling of any property being car or house etc. , a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.
Assignment and Transmission of Trademark
Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark. The ...
Assignment of Trademarks in India
In a case of assignment or transfer of a single trade mark: if made within six months from the date of acquisition of proprietorship, then the official fee is Rs. 5000; ... The stamp duty has to be calculated on the basis of the consideration. 5. The effective date of the assignment must be laid down clearly; 6. The most important part of an ...
Assignment of Trademark
Assignment of a trademark means to transfer the owner's right in a trademark to another person. The transferring party is called the assignor, and the receiving party is called the assignee. Section 2 (1) (b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties.
India
Discretion, however, is vested in the Court under Subclause (2) of Section 44 of the Act, whether to permit the said unregistered document in evidence or not. At the same time, it cannot be said that the procedure of registration of assignment is a mere formality. Section 44 has been incorporated merely as a safeguard by the Legislature in ...
Trade Mark Assignments
Ph: +61 (0)499 222 028 Email Us. "Marshall IP Group has been assisting SAI Global with its trade mark, IT and other intellectual property agreements for over 4 years now. They have demonstrated a good understanding of our businesses and services and this commercial understanding is applied to the legal advice and assistance they have provided.
Calculation of stamp duty for trademark assignment deed
Also what is the procedure for registration of Trademark Assignment Deed? I have been given 2 different advices 1) the stamp duty shall be 0.1% of the total value if the value is below Rs. 10 Lakhs and 0.2% if the total value is above Rs. 10 Lakhs; and 2) the stamp duty shall be 3% of the total value. Reply Follow. 1 Replies.

What Is the Stamp Duty for Trademark Assignment?

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Types of Trademark Assignment

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How To Apply for Trademark Assignment in India?

Prepare the Assignment Agreement:

Calculate Stamp Duty:

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Pay Stamp Duty:

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Detailed Calculation of Stamp Duty

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Stamp Duty for Transfer or Assignment of Intellectual Property

Trademark assignments: Transferring ownership or changing your name

Limitations based on filing basis

Madrid Protocol section 66(a) U.S. applications and registrations

How to update ownership information

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