Trademark Assignment Requirements

Trademark Assignment Requirements

Trademark Assignment (TA) is the transfer of trademark ownership from one entity or person to another. The transferring party transfers all trademark property rights to the receiving party. Following the assignment of a trademark, the assignee becomes the trademark's proprietor. Trademark Assignment (TA) is the transfer of a trademark owner's right to another person or business entity. It is an important step that results in immediate monetary benefits as well as lower maintenance costs for trademark portfolios. If collecting and submitting documents is a hassle for you, we have prepared a brief guide on the documents required for Trademark Assignment in India. So, in this blog, we will go over all of the Trademark Assignment Requirements that are required for TA.

Documents Required for Trademark Assignment

Only a registered owner has the authority to transfer trademark rights. Trademark rights can be transferred either before or after the trademark has been successfully registered. It should be noted that the document requirements are identical in both cases. To transfer rights prior to registration, use Form TM - M to submit a request for trademark rights transfer. Form TM - P, along with the prescribed fee, must be filed after a successful trademark registration for trademark assignment. When it comes to Trademark Assignment in India, it is always best to seek professional help. The documents required for the trademark rights transfer process are listed below.

Ø  Goodwill Certificate: This document is required when the trademark is transferred entirely along with the trademark owner's goodwill by the assignor. A goodwill certificate basically states that the assignor has a right to all entitlements related to the qualitative value of a trademark and that the assignor is transferring his/her rights in a trademark to another person. A goodwill certificate allows the assignee to use the trademark for any type of goods and services, whereas a trademark assigned without a goodwill certificate can only be used for a limited set of goods and services.

Ø  Trademark Assignment Agreement: To make such TA enforceable, parties must execute a written agreement during the trademark sale process. It is a document that acknowledges the transfer of rights and responsibilities from one person to another. It depicts the transfer of ownership of a trademark, the parties' interests, and the rights and obligations associated with the trademark assignment, as well as the consideration paid to the assignor for such transfer. The parties may keep a copy of the assignment agreement, and the originals must be submitted to the appropriate trademark registry to give effect to the trademark's change of title. An Assignment agreement details various parties' entitlements, rights, and responsibilities. Before performing a trademark assignment in India, it is best to consult with a professional.

Ø  Acknowledgment slip: An acknowledgment slip signed, stamped, and notarized by the assignor for receipt of consideration from the assignee for Trademark Assignment is also required.

Ø  No Objection Certificate from the assignor: The Assignor executes a No Objection Certificate from the assignor that is duly stamped and notarized. The assignor's desire to transfer trademark ownership is encapsulated in a no-objection certificate. The trademark assignor also agrees in this document that they have no objection to such a transfer of rights.

Ø  Assignee's No Objection Certificate: The assignee's No Objection Certificate, duly stamped and notarized. It states that if one of the parties is a corporation, a Board Resolution on the letterhead of the corporation approving the assignment agreement and authorizing any representative to deal with the said trademark assignment must be stamped and notarized.

Ø  Form to be fill: Form TM-P, along with the governmental fees where the trademark is registered, must be filed. Where the trademark is registered, a Power of Attorney authorizing the Trademark Agent or Attorney to file the subsequent proprietor by way of assignment, along with governmental documentation, must be filed. Form TM-M, along with governmental fees, must be filed where the trademark is pending registration.

Ø  Power of Authority: When two parties are involved, the assignor is the party who assigns the rights to the other party. The assignee is the person who receives the trademark rights during the assignment process. If the trademark assignment is done with the assistance of a legalraasta, each party must execute a power of authority. POA authorizes legal professionals to make representations and pursue legal procedures related to assignment on behalf of any individual or business.

Ø  Acceptance of trademark rights: The Assignee provides it. This is another important document that must be submitted to the trademark registry during the trademark assignment process. The assignor can transfer trademark rights, and the assignee must accept them as well.

When is it possible to assign a trademark?

Ø  Death of a Trademark proprietor: If the brand name is valid and has not been abandoned by the previous owner, its ownership is passed to successors of previous owners in a will after the assignor (owner) dies.

Ø  Sale of Business: If an individual acquires a company's brand name rights through the sale of the company's assets, the intellectual properties will also be transferred.

Ø  Change of Ownership of a Business:When a company merges, a notification is sent to the registry. All of the acquiring company's intellectual property is transferred to the new proprietor via a trademark assignment agreement.

Ø  Change in Business Form: When a company's business type changes.

Elements of a Trademark Assignment

Ø  Two parties: There should always be two parties, namely the assignor and the assignee.

Ø  Must be in writing: The agreement must be written down.

Ø  Identify the mark to be registered: The agreement should include the mark being assigned.

Ø  Consideration: The assignment is made in exchange for a valid consideration, which is specified in the agreement.

Ø  Effective Date: The assignment agreement must specify the date on which it becomes effective.

Ø  Goodwill: It is necessary to specify whether the agreement is with or without goodwill.

Ø  Executed: Signed by all parties involved in the assignment.

 

Conclusion

In this article, we have broadly classified the list of commonly used documents for trademark transfer. Because the Trademark Assignment Process is complex, you should always seek the advice of an expert for trademark assignment or trademark registration related services. Learn more about trademark assignment and the transfer of trademark rights. Our expert team has extensive knowledge of the complexities of trademark registration. Furthermore, our experts will ensure that the trademark assignment contract is properly registered and implemented. They will go to great lengths to maximize your potential profit. If you require expert advice or assistance with any trademark-related issues, please contact our Legalraasta representatives.