Trademark Assignment

Here’s What You’ll Need

To prevent others from using your trademark, register it. Your documents are always secure with Zolvit's best-in-industry security protocols. Here are the documents you need to prepare for the trademark assignment.

• Trademark registration certificate
• Details (identity and address proof) of the assignor and assignee
• A letter of consent from the original trademark owner
• Goodwill or no goodwill in a trademark assignment
• Registrar's direction along with the advertisement
• Witnesses and signatories
• Obtaining notarisation
• Date and place of execution
• The power of attorney

Did you know?

Like physical properties, trademarks can also be transferred by their owners. An assignment is one way to transfer a trademark. An assignment is the transfer of rights, interests, titles, and benefits from one person to another. The assignment of a trademark is the transfer of ownership rights to another party.

A trademark assignment is a transfer of an owner's right, title, and interest in a trademark or brand mark in accordance with Section 37 of the Trademark Act of 1999. In cases where a trademark is registered, the assignment must be recorded in the trademark register.

An Overview of Trademark Assignment

Owners of trademarks can transfer them similarly to owners of physical properties. An assignment is one way to transfer a trademark. An assignment refers to the transfer of rights, interests, titles, and benefits from one person to another. Transferring a trademark right to another person is called an assignment.

The assignor is the party transferring ownership, and the assignee is the party receiving it. A trademark can be assigned in writing by an act of the parties concerned under section 2(1)(b) of the Trade Marks Act, 1999. Trademarks can be assigned with or without goodwill, whether they are registered or unregistered.

Types of Trademark Assignments

• Complete Assignment

  Trademark rights are transferred to another party, including the right to earn royalties, to further transfer, and so forth. As an example, X owns the brand ABC. Through an agreement, X assigns his trademark 'ABC' to Y in its entirety. X will no longer have any rights to the ABC brand after this.

• Partial Assignment

  Assigning a trademark to another person is limited to specific services or goods. Transfer of ownership in trademarks is restricted to specific products or services. As an example, X is the owner of the brand ABC which is used for sauces and dairy products. Regarding dairy products, X assigns the rights to Y in the ABC brand to Y while retaining the rights in the ABC brand regarding sauces.

• Assignment With Goodwill of Business

  A trademark proprietor transfers the rights, entitlements, and values associated with their trademark to another party. Assigning a trademark with goodwill allows the assignee to use it for any class of goods or services, including those the assignor had already used. For example, X owns the 'lulu' brand of hair products. With goodwill, X assigns the brand 'lulu' to Y. The brand 'lulu' may be used on food products and other products manufactured by Y.

• Assignment Without the Goodwill of Business

  With respect to products or services that aren't in use, the trademark proprietor assigns rights and entitlements to the assignee. The assignor restricts a trademark assignment without goodwill. In the assignment, the assignor stipulates that the assignee is not entitled to use the trademark relating to goods or services already in use by the assignee. For example, X manufactures and sells bags under the brand 'Lulu'. X assigns the brand 'lulu' to Y without any goodwill. Other than bags, you can use the brand 'lulu' for any other product.

• Assigning a Trademark Requires Certain Prerequisites

  • Assignments of trademarks should be in writing.
  • A trademark assignment must involve two identifying parties: the assignee (purchaser) and the assignor (owner).
  • An assignor must consent to the trademark assignment and intend to do so.
  • A proper and adequate consideration (amount) should accompany the trademark assignment.

Trademark Assignment With Zolvit

Using our experts to navigate the complex trademark assignment process will save a lot of time and stress. Our team ensures that all steps of the process are completed online and that the documents are filed on time. Here are few benefits of trademark assignment:

• Trademark assignments allow brands to be encashed
• Trademark assignment gives the assignee the rights of an established brand
• Both the assignor and assignee benefit from trademark assignments
• In case of dispute, the trademark assignment agreement establishes the legal rights of the assignor and assignee.