Trademark Assignment - Overview

Updated on September 27, 2024 01:31:48 PM

Assignment of a trademark occurs when the ownership of such mark as such, is transferred from one party to another whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.

It can be assigned in the following situations:-

• Death of the Trademark owner:When the owner i.e. assignor dies, it’s ownership passes to the successor of the previous owners in a will or estate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

• Sale of business:Like other properties , intellectual properties are also the assets for the company. Even the trademark is also sellable along with the company. Provided, it has to be registered under the company’s name. If a company acquires a business along with the trade mark rights with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.

• Change of the ownership of the business:When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.

• Change in form of business:Whenever there is a change in business plan or it’s form or structure, an assignment is a boon for those businesses

For completion of the assignment of trademark, there are a few basic requirements that need to be fulfilled by the parties.

• The parties must identify the type of assignment they wish to have, either with or without goodwill.
• The trademark assignment agreement must be in writing;
• Proper Identification of the parties to the assignment, that is, the assignor and the assignee;
• Details and Identification of the Mark(s) to be assigned;
• Identify the effective date of the assignment;
• Be duly executed, i.e. it must be signed by all the parties to the assignment,
• Form TM-P should be duly filled and submitted to the registrar along with the trademark assignment agreement between the parties.
• The trademark should be transferred for a valid consideration;

It is beneficial as

• It benefits the assignee as he gains the advantages of entering the market with a previously registered and known trade mark, this will help him in keeping up the client base for his item without chipping away at brand building.
• It goes about as proof as there exists an agreement between the assignor and the assignee for the exchange of the trade mark if in a case a dispute arises between the parties.
• The assignor gets the opportunity to monetize the value of his trademark and appreciate the products of the time and investments done for creating his brand in the market.
• It helps in business extension and in keeping the brand alive.
• It causes the trade mark owner to protect the brand and the goodwill of the item.