Trademark assignment is the process by which the trademark owner assigns the ownership and rights of the trademark to any other party. The assignment can be partial or complete. It can be with or without goodwill. In other words, it is an agreement between the two parties in which first party assigns the ownership & rights to other party to use their trademark.

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Trademark Assignment

There are different types of trademark assignment that are accepted in India. The assignment agreement is drafted by the parties based on the need & requirements.

The types of assignment are as follows -

  • Complete assignment – In case of complete assignment, all the owner rights of registered trademark are assigned to a third party. Then, assignee becomes the sole owner of the trademark and enjoys all the rights of the original trademark owner. After becoming the owner, transferee has the full right to assign, trade & market and can also stop others for using it without authorization.
  • Partial assignment – In case of partial assignment, the ownership is transferred to other party but owner of the trademark restricts them to use this assigned trademark only for certain products or services as decided by the parties in the trademark assignment agreement. For ex – If the trademark owner mention in the agreement that his trademark can only be used for food products, than the assignee can use the trademark for only food products suitable for human consumption and not for any other goods or services.

Both complete and partial assignment can be made with the assignment of goodwill or without goodwill –

  • Assignment with goodwill – When an assignment is made with goodwill, trademark rights & values associated with it are given by the assignor to the assignee to only use the trademark for the goods or services already sold by him. For ex – Vaibhav is the owner of a trademark deals in manufacturing and selling of jackets and can assign the rights of his trademark to the assignee to use the same product for manufacturing and selling i.e. jackets.
  • Assignment without goodwill – In case of assignment without goodwill, the assignor can restrict the assignee on the products already used by him. In this case, assignor and assignee both can use the trademark but for distinct goods & services. For ex – Rahul is the owner of a trademark deals in manufacturing and selling of jackets and decides to assign it without goodwill. In such a case, assignee can use the trademark for any other product other than jackets.

Documents required for trademark assignment

  • A duly stamped & notarized assignment deed containing the following details –
    1. Full name
    2. Address of transferor & transferee
    3. Signatures of both the parties
    4. Date
  • Statement telling whether the assignment is with goodwill or without goodwill of business
  • Consideration paid by the assignee to the assignor
  • Affidavit by the transferee mentioning the details of the assignment ensuring that there is no pending litigation and trademark ownership is not in dispute

Procedure to Record the Assignment of a Trademark

  • Assignment of an unregistered trademark – Section 39 states that an unregistered trademark may be assigned or transmitted with or without the goodwill of the business. Form TM-16 is filled to assign or transfer an unregistered trademark.
  • Assignment of a registered trademark – Section 38 states that registered trademark may be assigned in full or transmitted in part with or without the goodwill of the business. Form 23 or Form 24 is filled with registrar of trademark to assign or transfer a registered trademark.

Fees for Assignment or Transfer of Single Trademark

The fees for assignment or transfer of single trademark is given below –

Particulars Statutory Fees
If assignment or transfer of single trademark is made within 6 months from the date of acquisition of proprietorship. Rs.5000
If assignment or transfer of single trademark is made after the expiry of 6 months period but before 12 months from the date of acquisition of proprietorship. Rs.7500
If assignment or transfer of single trademark is made after 12 months from the date of acquisition of proprietorship. Rs.10000

Benefits Of Trademark Assignment

  • Every business expects return on the money, time he has invested to make his brand value. By the way of assignment, business owners can easily encash the brand value which is only recorded on a piece of paper.
  • Due to assignment process, the brand is valued and owner receives money in the form of royalty.
  • Assignment of trademark offers security for both the parties signing the agreement. It creates a valid proof in terms of any dispute occurs in future in court of law.
  • The another benefit is that if an assignee purchase a pre-recognized brand will certainly get benefit in terms of market base and there is no need for the assignee to do more investment in terms of money, time & labour to create and market the same brand.
  • It also helps the assignee to expand the business later in future by way of licensing. It will help in brand building too.
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