Transferring ownership of trademarks is a common practice, and it can be done through various methods such as assignment, merger, or amalgamation between entities. In this article, we will focus on the assignment procedure for trademarks in India.
Assignment of Trademarks: Trademark assignment involves the transfer of ownership of a mark from one entity to another. This transfer can occur with or without the goodwill of the business. Let’s explore the two types of assignments:
1. Assignment with Goodwill: This type of assignment involves transferring not only the rights but also the value associated with the trademark as it relates to the products or services being offered. For example, if the owner of the “OFIN” trademark, Ofin Legal Private Limited, assigns the trademark to another entity, the assignee will have the right to use the trademark for the same product.
Forms and Fees: To record the assignment of a pending trademark (with goodwill), you need to submit Form TM-M (Correction of Clerical Error or for Amendment U/R 37) along with an official fee of INR 900 per mark.
For a registered trademark (with goodwill), the appropriate form is Form TM-P (Subsequent Proprietor by way of Assignment or Transfer of Mark), and the official fee is INR 9000 for each assigned mark.
2. Assignment without Goodwill: In this type of assignment, the assignor restricts the use of the trademark by the assignee to specific products or services. The goodwill associated with the owner’s brand for the existing product is not transferred to the buyer. Both the assignor and assignee can use the same trademark but for different goods or services.
Procedure for Filing an Application to Record Assignment without Goodwill: To record an assignment without goodwill, the applicant must submit an application under Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill). The official fee for this form is INR 2700. The deadline to submit the assignment is six months from the date of filing. It is also possible to request an extension of three months, as per prescribed forms. The purpose of this application is to request the Registrar to advertise the assignment to the public.
After the assignment has been advertised, the applicant can file the Form TM-M or TM-P (depending on the status of the trademark) along with a copy of Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill) and the advertisement notice issued by the Registrar.
Documentary Requirements: To complete the assignment process, certain documents need to be submitted:
- Assignment Deed: A duly stamped and notarized assignment deed is required. The deed should include the effective date, full names and addresses of the assignor and assignee, their signatures, the consideration paid for the assignment, and details of the trademarks being assigned. For applicants outside India, the assignment deed must be notarized in the country of execution and stamped in India.
- Affidavit of No Pending Litigation: The Indian Trade Marks Registry now requires an affidavit confirming that there is no pending litigation and that the ownership of the trademarks is not in dispute. Along with the assignment deed, the assignee should submit a duly stamped and notarized affidavit containing the details of the assignment and the assigned trademark, affirming the ownership status.
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In conclusion, the process of trademark assignment in India involves submitting the appropriate forms, paying the required fees, and providing the necessary documents. It is crucial to comply with the regulations and follow the correct procedures to ensure a smooth and valid assignment of trademark rights.