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Trademark Assignment: How to apply for Trademark Assignment?

  • August 02, 2022
  • Registrationwala
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Trademark

A Trademark is essentially a pictorial representation of a Brand. It can be anything, say a sign, symbol, word, or phrase. But these marks for the Trade or simply said a Trademark must be registered with the IPR authority before the company can use it to mark its products.

Infringing of a Trademark

The reason for registering a Trademark is obvious. A Trademark informs your customer base that the product is of your unit or company. Therefore, the company to which the trademark belongs must secure the trademark by registering it with the Authority. The trademark must not be tampered with. Any illegal use of the trademark gives the trademark-owning company the right to seek legal action against the infringer.

Why Trademark Assignment?

But this doesn't mean that a third party cannot use a registered trademark of an existing company. A trademark, like any other product, can be sold or transferred, depending on the owner's intention. To put it more formally, a Trademark owner, i.e., a Trademark Assignor or simply an assignor, can transfer the brand and its rights to the trademark assignee or simply an assignee.

This procedure for change of registered trademark ownership is known as the trademark assignment. To assign a registered trademark to a party, firstly, the assignor must draft and register a Trademark assignment agreement with the authorities. Only after submitting the agreement the assignment procedure can take place.

Procedure for Trademark Assignment

The Trademark assignment process happens in two stages: first, drafting and registering the Trademark Assignment Agreement between the assignor and the Assignee. Afterwards, filing for the trademark assignment with the Registrar of Trademarks.

Trademark Assignment Agreement

The assignor or the Assignee can file an application for the trademark assignment arrangement.

Transfer details

Assignor or Assignee, whoever has filed the application for Trademark assignment must add all the assignment details in the Assignment agreement.

TM-P Form filing

The Registrar of Trademark provides a specific form that the applicant has to fill ans submit to the Authority. The form is TM-P.

Application filing with the RoT

The applicant must then draft the agreement application. Afterwards, file the application with the RoT. The applicant must file the application within three months of proprietorship acquisition.

Case: When there is a particular case of trademark assignment with goodwill or trademark assignment for a registered trademark, the direction from the Registrar of Trademark is mandatory before the expiry of 3 months (can be extended)

Assignment advertisement

The applicant must strictly adhere to the guidelines issued by the RoT while creating the trademark assignment advertisement. After the ad creation, the applicant can submit a copy of the advertisement to the Registrar.

Application assessment

After assessing the application by the Registrar, the Registrar must transfer the trademark from the original to the new owner. Then, assignee credentials must be registered as a new proprietor. After this, the Assignee can use the trademark per the agreement's terms. 

Procedure for Trademark Assignment

The Trademark Assignment process is as follows:

Application to the RoT

After registering the agreement, the applicant must file for

assignment to the RoT (Registrar of Trademarks). After the assessment application with the Registrar. Upon reception, the Registrar must register the Assignee as the new owner of the assigned trademark.

In case of Dispute

If the trademark validity remains ambiguous between the parties, then the Registrar will abstain from registering the assignment. Only a competent court can settle the dispute between parties. Until then, the Registrar must refuse the trademark assignment within three months from the date of receipt of the application.

Summons

The Registrar can call any person who has applied to be an owner of a registered trademark to furnish such proof for the documents or statements they have submitted. Where, in the opinion of the Registrar, any document produced in evidence of the 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.

Details of Trademark transfer

The Registrar, upon successful verification, must entertain the details of the newly assigned trademark in the Register of Trademarks. The details are as follows:

  • Name of the Assignee
  • Address of the Assignee
  • Date of Assignment
  • Rights, royalties, and entitlements assigned to the new owner
  • Basis of Assignment
  • Date of Entry in the Register of Trademark

 


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