Trademark Transfer Services
Trademark Transfer, also known as Trademark Assignment, is a legal process by which ownership rights in a registered or unregistered trademark are transferred from one individual or entity to another. This process plays a vital role in the broader framework of intellectual property management, facilitating the sale, restructuring or succession of business assets that include valuable brand identifiers.
What is a Trademark?
A trademark is any word, logo, phrase, symbol, or combination that distinguishes the goods or services of one party from others in the market. It helps build brand identity and consumer trust. Over time, a trademark becomes a business asset that can be licensed, assigned, or transferred.
Understanding Trademark Assignment Under Section 37 of the Trade Marks Act, 1999, trademark assignment refers to the legal transfer of all rights, title, and interest in a trademark from the current owner (assignor) to another party (assignee). The assignment may cover a registered trademark, an application pending registration, or even unregistered marks in certain cases.
Common Scenarios for Trademark Transfer
- Transfer due to death of the trademark owner (succession)
- Sale of business including goodwill
- Sale of a trademark independently
- Corporate restructuring or merger
- Change in business name or legal form
- Transfer based on a court order
Benefits of Trademark Assignment
- Allows monetization of a valuable brand asset
- Enables business expansion and collaborations
- Grants legal rights to the new owner
- Reduces risk of disputes through formal documentation
Types of Trademark Assignments
- Complete Assignment: All rights in the trademark are transferred.
- Partial Assignment: Rights are transferred for specific goods/services only.
- Assignment with Goodwill: The goodwill associated with the brand is also transferred.
- Assignment without Goodwill (Gross Assignment): Only the mark is transferred, not the brand’s reputation or customer base.
Requirements for Trademark Transfer
- A duly executed Trademark Assignment Agreement
- Consent from both assignor and assignee
- Consideration (monetary or otherwise)
- Supporting documents including trademark certificate and ID proofs
Trademark Assignment Agreement Essentials
- Clear identification of assignor and assignee
- Scope of transfer (complete or partial)
- Inclusion or exclusion of goodwill
- Territorial rights
- Rights to past and future claims or damages
- Compliance with the Stamp Act and notarization
- Signatures of both parties and witnesses
Restrictions Under Trademark Law
- An assignment cannot result in multiple exclusive rights to use the same or similar trademarks for identical or similar goods/services if it creates confusion.
- The law prohibits assignments that divide trademark use territorially in a way that may mislead the public.
Trademark Transfer Procedure in India
- Drafting the Assignment Agreement Legal drafting of a detailed and valid agreement.
- Application Filing (Form TM-P) Filing of Form TM-P with the Trademark Registry within six months of the date of assignment.
- Advertisement (If Directed) The Registrar may require the assignment to be advertised for public notice.
- Registrar Review and Registration Upon satisfaction, the Registrar updates the records and registers the assignee as the new trademark owner.
Documents Required
- Duly signed Trademark Assignment Agreement
- Trademark Registration Certificate (if applicable)
- No Objection Certificate (NOC) from the assignor
- Identity and address proof of both parties
Transfer Your Brand Rights Securely — With Consult Your Counsel.