Posted by Enter-Slice on July 5th, 2018

A Trademark is a distinctive mark/ sign helps to distinguish and identify certain goods and/ or services from that of the others. When used for specific services, it is known as a Service Mark.

It can be represented in the form of your company’s name or logo, a color, an abstract or combination of any. The primary requirement is that the mark must distinguish the source and origin of the goods. A trademark creates brand loyalty and helps in advertising by adding value to the business. Using the trademark aids the customer to easily identify and remember the products allowing the building of a loyal customer base.

If the trademark registration has been successfully, the symbol ® may be used. For unregistered trademark, the symbol shall be used.

How to transfer the rights associated with a Trademark?

As with any physical property like land, house, every owner of a Trademark has been given the right to sell, license, transfer etc the trademark owned with a due procedure of law. Thus, the owner of a Trademark can transfer his right with respect to the Trademark in two ways- assignment and licensing. The transfer may take part as a part of merger or amalgamation between two entities.

What is the assignment of trademark?

When the ownership of the Trademark is transferred from one party to another, it is the Assignment of Trademark. For a registered trademark, the Registrar of Trademarks has to be informed and the assignment has to be recorded. The goodwill associated with the business that is showcased through the Trademark may or may not be present in the assignment.

  1. Complete Assignment to another entity:
    Here, the owner of the trademark transfers the rights with respect to the trademark such as to further transfer, earn royalties etc in entirety. 
  2. Assignment with respect to only some goods and services:
    Such transfer is restricted to specific products and/ or services only.
  3. Assignment with goodwill associated:
    This is where the owner of the trademark shall transfer the all the rights and value that the trademark brings to the goods/ services, which shall include the goodwill associated as well.
  4. Assignment without goodwill associated:
    This is where the owner restricts the assignee to use the trademark. Thus, in this case, the buyer of the trademark can use the assigned trademark for all the good/ services except those for which the assignor used the trademark.  

What is the process prescribed to file for and record the assignment of trademark?

Upon the successful assignment of the trademark, it is imperative that the change in the ownership is recorded with the Trademark Registry. There are specific forms with prescribed fees that have to be filed.

  1. For any trademark, whether registered or unregistered, to be assigned to another the following documents are required:
    1. Trademark assignment agreement
    2. Identified documents of assignor and assignee
    3. A Power of attorney
  2. To file an application for the assignment of Trademark, following supporting documents must be filed.
    1. Trademark Assignment Application for trademark assignment is required to be made to register the assignee as the subsequent owner of the trademark.
    2. Form TM- P form has to be submitted to the Registrar of Trademark within a period of 6 (six) months from the date of assignment. The fee prescribed is Rs. 1000 for physical filing and Rs. 900 for e-filing.
  3. For an assignment of a registered trademark, without goodwill or assignment, a direction if required from the Registrar of Trademarks before the expiry of 6 (six) months from the date of assignment.
  4. The assignment if the trademark is also required to be advertised in such manner and period as the Registrar may direct.

       Source By :

Like it? Share it!


About the Author

Joined: July 4th, 2018
Articles Posted: 4

More by this author