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Trade Mark Assignment Agreement
A Trade Mark Assignment Agreement ("Assignment Agreement") is a legal document under which the Trade Mark owner, known as the "Assignor," assigns another person or entity to own such rights, known as the "Assignee", in exchange for an agreed payment, known as a "Consideration".
Trade Mark is a word or symbol representing a company or product. A Trade Mark can be one that is registered under the Trade Marks Act, 1999 or one that is established by continuous and prolonged use of such a word or symbol in relation to a particular company or product. For example, APPLE, GOOGLE, TATA, etc.
As per the Trade Mark Act, 1999, the Assignment of Trade Mark has to be done by execution of the assignment deed in writing. Both the registered and unregistered Trade Mark under the Act can be assigned to a third party.
An assignment Agreement is different from a License Agreement , under an Assignment Agreement, the Assignor gives away all the rights over the Trade Mark for a fixed amount or consideration and will not be entitled to use such Trade Mark or receive regular Royalty payments on it. On other hand, under the License Agreement , the owner of the Trade Mark grants permission to another person to utilize the Trade Mark in a particular manner for a limited period of time.
The Assignment Agreement can be of two types:
- Assignment with goodwill: The Assignor transfer absolute rights and values associated with the Trade Mark to the Assignee. After entering into this Agreement, the Assignor will not be able to use any goods or services related to the Trade Mark. For example, ABC Ltd owns a Trade Mark with the wordmark "GREENGO" registered under classes 35 and 42. Under this arrangement, ABC assigns all its rights over the Trade Mark "GREENGO" in relation to Classes 35 and 42 along with any other classes registered in the future.
- Assignment without goodwill: Under this, the Trade Mark related to particular goods or services will be assigned to the Assignee and the Assignor will retain the right to use and assign the goods or services which are not assigned to the Assignee under this Agreement. For example, XYZ Ltd owes a Trade Mark with the wordmark "ORANGE TECH" registered under classes 30 and 39. Under this arrangement, XYZ assigns the Trade Mark to the assignee only in relation to class 30 and retains the rights over class 39 and any future classes under the same name.
Restrictions on assignment of Trade Mark:
- Restriction on assignment or transmission where multiple exclusive rights would be created . Thus, the same or similar goods or services cannot be assigned to different entities or people. If different Trade Marks are assigned, such assignments should not cause any confusion among the users of such goods or services.
- Restriction on assignment or transmission when exclusive rights would be created in different parts of India. Thus, the Trade Mark cannot be assigned to different people on a geographical basis within the boundaries of India.
How to use this document?
This Agreement covers the following major provisions:
- Parties: The type and details of the parties i.e. Assignor and Assignee are included under this Agreement. The Parties can be an individual, company, partnership, LLP and so on.
- Description of Trade Mark: the details about the Trade Mark can be mentioned under this Agreement. If required, a detailed description can be mentioned under Schedule-A to the Agreement.
- Assignment of Trade Mark : defines the assignment of Trade Mark and denotes whether the Trade Mark is assigned with or without the goodwill.
- Consideration: It includes the method of calculation of consideration payable by the Assignee, how it will be paid to the Assignor and who will bear the cost of GST (Goods and Services Tax) payable on such transaction. This clause also includes the penalty for any late payment of Consideration by the Assignee.
- Warranties: The warranties or promises by both the Assignor and Assignee regarding their capacity to enter into this Agreement, ownership over the Trade Mark, compliance with the terms of this Agreement and laws are included. If required, such additional warranties can be mentioned under this clause.
- Confidentiality: Under this, both parties agree not to disclose confidential information including trade secrets, know-how, plans and so on to any third parties. If required, a separate detailed non-disclosure agreement can be signed between the parties.
Once the details are filled in, this Agreement can be printed on non-judicial stamp paper of value prescribed by the concerned state where this Agreement is executed. The Agreement has to be signed by two independent witnesses who are not a party to this Agreement and must be notarized by a notary located in the place where this Agreement has been executed.
Once the Agreement is executed and notarized, it needs to be registered with the Registrar of Trade Mark within six months.
Assignment of the Trade Mark is covered under the Trade Marks Act, 1999. Only those assignment agreements registered with the Registrar will have protection under this Act.
An Assignment Agreement is a contract and general principles of the Indian Contract Act, 1872 will be applicable.
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Other names for the document:
Trademark Assignment Agreement, Assignment of Trade Mark Agreement, Agreement to sell a trade mark, Assignment of goods trade mark, Assignment of service trade mark
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Assignment of Trademark
Updated on : Feb 22nd, 2022
Trademark proprietors can transfer trademarks similarly to how they can transfer physical properties. One of the ways to transfer a trademark is through an assignment. Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner’s right in a trademark to another person.
The transferring party is called the assignor, and the receiving party is called the assignee. Section 2(1)(b) of the Trade Marks Act, 1999 states that assignment means an assignment of a trademark in writing by the act of the concerned parties. Both unregistered and registered trademarks can be assigned with or without the goodwill of the business.
Who can Assign a Trademark?
Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.
Kinds of Trademark Assignment
The different kinds of trademark assignments are as follows:
The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc.
For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.
The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.
For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand ‘ABC’ with respect to sauces.
Assignment with Goodwill of Business
The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor.
For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.
Assignment without the Goodwill of Business
The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.
For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.
Pre-Requisites for Assignment of Trademark
- The trademark assignment should be in writing.
- The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
- The assignor should have the intent and must consent for the trademark assignment.
- The trademark assignment should be for a proper and adequate consideration (amount).
Trademark Assignment Agreement
The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:
- The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
- The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
- The agreement should show a clear purpose of the transaction/assignment.
- The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
- The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
- The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
- The signatures and witnesses must be mentioned.
- The place and date of agreement execution must be mentioned.
- The date and day of the assignment along with the parties to the assignment must be mentioned.
- The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.
Process of Assignment of Trademark
The process of assignment of the trademark in India are as follows:
- The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
- The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
- Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
- The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
- The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
- Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.
Documents Required for Assignment of Trademark
The following documents must be submitted to the registrar of trademark along with form TM-P:
- Trademark assignment agreement.
- Trademark certificate.
- NOC from the assignor.
- Identification documents of the assignor and assignee.
Restrictions on Assignment of Trademark
The Trademarks Act, 1999 provides the following restrictions on trademark assignment:
Parallel Use Restriction
The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.
Multiple Territorial Use Restriction
The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.
Benefits of Trademark Assignment
- The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
- The assignee obtains the rights of an already established brand due to trademark assignment.
- The trademark assignment supports the assignor and the assignee to expand their respective businesses.
- The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.
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Trademark Assignment Process in India: A Comprehensive Guide
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.
If you need further assistance or have any questions regarding trademark assignment, you can reach out to us at [email protected] .
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.
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The process of transferring ownership of the trademark (symbol, word, number, or even a mix of colors) either with or without the goodwill of the business is called Trademark Assignment. Get your trademark assigned online with Vakilsearch. T&C*.
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Overview - Trademark Assignment
Benefits of Assignment on Trademark
Requirements for Trademark Assignment
How to assign
Documents Required for Trademark Assignment
FAQs on Trademark Assignment
1. At the time of the assignment, it is used in the same business as a registered trademark
2. Both the registered and unregistered trademarks are assigned at the identical time and to the same person.
3. Goods regarding which the assignment is effected are the same for both the registered and unregistered marks..
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A Comprehensive Guide to Trademark Transfer Process in India
Protecting your brand identity is paramount in today’s competitive business landscape. One of the ways to safeguard your brand is by registering a trademark. However, there may be instances where you need to transfer your trademark rights to another party. This could be due to various reasons, such as selling your business or entering into a licensing agreement. In this blog, we will explore the trademark transfer process in India, helping you understand the steps involved in ensuring a smooth transition of trademark rights.
What is a Trademark Transfer?
A trademark transfer, also known as trademark assignment, involves the transfer of ownership or rights of a registered trademark from one person or entity to another. This transfer can be partial or complete, and it is essential to follow the legal procedures outlined by the Indian government to ensure the validity and enforceability of the transferred trademark.
Trademark Transfer Process in India
- Determine the Need for Transfer: Before initiating the transfer process, it’s crucial to establish the reason for the transfer. This could be due to a business sale, merger, or licensing agreement. Understanding the purpose will help you proceed in the right direction.
- Due Diligence: Both the transferor (current trademark owner) and transferee (new trademark owner) should conduct due diligence. This includes verifying the trademark’s validity, ensuring there are no pending disputes, and confirming that all renewal fees are paid up to date.
- Draft a Trademark Assignment Deed: The next step is to draft a trademark assignment deed. This deed should include details like the parties involved, the description of the trademark, the date of transfer, and the consideration involved (if any). It’s advisable to seek legal assistance to draft a comprehensive and legally binding document.
- Execute the Assignment Deed: Both parties should sign the assignment deed in the presence of two witnesses. The deed should be executed on a non-judicial stamp paper of requisite value, as per the Stamp Act of the respective state.
- The original assignment deed.
- A Power of Attorney (if a representative is filing on behalf of the parties).
- An application for trademark transfer on Form TM-P.
- The prescribed fee for the transfer.
- Review and Approval: The Trademark Office will review the documents and, if satisfied, will approve the transfer. The office may request additional information or corrections if necessary.
- Publication: Once the transfer is approved, the Trademark Office will publish the assignment details in the Trademarks Journal. This allows any interested parties to object to the transfer within a specified period.
- Registration: If no objections are raised, the trademark transfer will be registered, and the transferee will become the new owner of the trademark.
- Update Records: After the transfer is completed, it is essential to update all records, including licenses, contracts, and official documents, to reflect the new trademark owner.
Transferring a trademark in India involves several steps to ensure that the process is legal and enforceable. Proper documentation and adherence to the regulations set forth by the Indian government are crucial throughout the trademark transfer process. Seeking legal guidance from a qualified attorney can help navigate the complexities of trademark transfers and ensure a smooth transition of rights. Protecting your brand’s identity is a serious matter, and understanding the trademark transfer process is a vital aspect of this endeavor.
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Assignment and Transmission of Trademarks in India
Table of Contents
According to the Trade Mark Act 1999
“Trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.” Which in layperson language suggests that any sign-on product or services that create it totally different from the opposite or simple to differentiate one from the opposite may be a Trademark.
Assignment and Transmission of Trademark
Assignment and Transmission of Trademark is a process in which ownership of the trademark is passed from one person to another with full or partial rights depending on the terms and conditions of the owner of the trademark. Registered and Unregistered Trademarks are assigned and transmitted from one person to another with or without the goodwill of the business concerned.
Difference between the Assignment and Transmission of the Trademark
Generally, the term Assignment and Transmission are used interchangeably but Sec 2 of the Trademark Act clearly distinguishes between the Assignment and Transmission. In case of an assignment of a trademark, there is a change in the ownership of the registered brand and in case of Transmission, the right in the trademark continues to vest with the original owner but only a few restricted rights to use the brand/mark are given to the third party.
For example, X is the owner of the trademark “œ” and decided to assign his trademark to Y. It means that X will no longer have the ownership of the trademark and after proper assignment Y will be registered owner of the trademark and will have all the rights to it.
Whereas if X decided to do the Transmission of a Trademark it will mean that X is still the original owner of the trademark but he has just given restricted rights and liabilities to Y to use the trademark.
Types of Assignment and Transmission of Trademark
Complete assignment and transmission.
It means the transfer of all rights including rights to further transfer, rights to royalties, etc from one individual to another.
For example, A proprietor ‘X’ sells his all rights of the Trademark to Y another proprietor according to which Y have all the exclusive rights of the Trademark and he can use the trademark in any way as he deems fit, if he wants he can further transfer it, he can receive royalties for the usage of Trademark or set some guidelines for the usage of the trademark as they deem fit and there will be no need to take the approval of ‘X’.
It means the transfer of ownership specified or restricted to certain services or products.
For example: ‘X’ a proprietor have a Trademark (♛) which deals with men’s lifestyle products which include clothing to shoes assign and transfer his trademark (♛) to Z on a condition that they can use their trademark only in dealing with shoes and nothing else, the only X has the right to use the trademark on all the products. This kind of transfer is known as a partial transfer.
Assignment with goodwill
It means to transfer and assignment of the trademark with all the rights and values associated with the trademark from one person to another.
For example, X assign and transfer his trademark (♛) to Z with all the rights and values. By doing this Z has the full right to use the trademark for all men’s lifestyle products or for any other products that they manufacture in future.
The assignment without goodwill
It means the transfer of trademark by the owner in such a way it can be used for any other purpose except the original one.
For example: X proprietor with a trademark (♛) deals with men’s lifestyle products, assigns and transfers his trademark(♛) to Z on a condition that Z can use his trademark for any product that he wants except for men’s lifestyle products.
Conditions for assignment and transmission as given in section 42
Section 42 of the Trademark Act describes Conditions for Assignment and Transmission of a Trademark otherwise than in connection with the goodwill of a business. It states that assignment and transmission of the trademark otherwise than in connection with goodwill will not take effect until and unless assignee apply to the registrar concerning the directions for the advisement of the assignment and advertises it in such form and manner and within such period as the Registrar may direct but not later than 6 months of which the assignment is made or after an extended period of 3 months if registrar allows for it.
But it will not be considered as an assignment of trademark otherwise than in connection with the goodwill of the business if the trademark is assigned for some goods and services along with the goodwill of the business concerned for those goods and services.
And the assignment is done for those goods which are exported and those services which are used outside India with the assignment of goodwill
Restrictions on Assignment of Trademark
Trademark act also makes certain restrictions on the Assignment and Transmission of the Trademark where there is a possibility of creation of confusion among users or public.
- Restriction on assignment or transmission where multiple exclusive rights would be created.
- Restriction on assignment or Transmission where exclusive rights would be created in different parts of India.
Process of Assignment and Transmission of Trademark (Section 45)
- Application to the Registrar of Trademark in Form TM-P
(with the original copy of duly certified documents)
- Registrar will dispose of his decision within 3 months
a).Inform the applicant about the assignment or
b) Call to furnish proof if he has some doubts.
- If approved, the registrar will make an entry in the Register with details,
(i) the name and address of the assignee;
(ii) the date of the assignment
(iii) where the assignment is in respect of any rights in the trademark, a description of the right assignment.
(iv) the basis under which the assignment is made; and
(v) the date on which the entry is made in the register 1 .
If there is any dispute going on between the parties regarding the validity of an assignment or transmission, the registrar may refuse to register the assignment or transmission until the right of the parties has been determined.
Assignment and Transmission of Registered Trademark (Section 38)
Section 38 of the Trademark Act describes the Transmission of Registered Trademark according to which “Notwithstanding anything in any other law to the contrary a registered trademark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trademark is registered or of some only of those goods or services”
Assignment and Transmission of Unregistered Trademark(Section 39)
Section 39 of the Trademark Act describes the Transmission of Unregistered Trademark according to which “An unregistered trademark may be assigned or transmitted with or without the goodwill of the business concerned.”
Benefits of Assignment and Transmission of Trademark
Expansion of business.
By assignment and transmission of the trademark from the owner to the assignee, the owner expands his business by using the same trademark in more than one place simultaneously. By giving the partial authority of the owner also has the power to give a trademark assignment to more than one person.
Benefits of the already established brand
Assignment and transmission of trademark help the assignee to use the already established trademark in the market to create their base. It also helps the assignee to save money and resources by not spending on marketing to create a brand.
Assignment and Transmission of trademark also act as a legal proof in case disputes of any kind arise regarding the usage of Trademark because all the legal rights and liabilities were already mentioned in a form of a legal deed.
By Assignment and Transmission of Trademark, the owner of the trademark enjoys monetary benefits received by assignment and Transmission along with the increase in the value of the brand by operating with the same Trademark in more than one place.
Structural waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]
It is stated that when disputes arise between parties for assignment and transmission of Trademark then the registrar can refuse to register the assignment and transmission until and unless the decision is taken by the competent court. In this case, the plaintiff claimed the ownership of the trademark only based on Memorandum of understanding created between them. The court in this case declined his request for an injunction on the defendant. It is also stated in the decision that the trademark cannot be claimed unsuitable merely because there is a change in the name of the registered proprietor.
Cinni foundation v. Raj Kumar Shah and sons[ 2009(41)PTC320(Del)]
It was found that the trademark CINNI was used by the owner. The deed of assignment has been created and duly signed between the parties and after a certain time, it is found that the trademark is not a registered trademark and so the defendant tries to claim the trademark in which court decided that according to the law, assignee acquire no title without registration of the assignment deed.
Assignment and Transmission of a Trademarks create ample opportunity for the owner as well as for assignee. It helps the new brand to get developed because of its usage from more than one place simultaneously. Developed brands used it as a tool to generate more revenue and business for themselves.
4.Trademark Act of 1999
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Documents Required for Trademark Assignment In India
Trademark assignment is the transfer of the trademark owner’s right in a trademark to another individual or business entity. It is an important step and it helps in instant monetary benefits along with the reduced cost of maintenance of trademark portfolio/s. The process of trademark assignment requires the assignor and assignee to execute and submit many documents. The documentation for trademark assignment may get confusing for a layman. Considering collection and submission of documents a hassle for you, we are here with a brief guide on the documents required for doing trademark assignment in India.
Documents Required for Trademark Assignment in India
Only a registered owner can transfer the rights of a trademark. Trademark rights can be transferred either before the trademark is registered or once the trademark is successfully registered. It must be noted that the document requirements remain the same in both cases. For transfer of rights before registration, you should file a request for trademark rights transfer through Form TM – M . For trademark assignment after a successful trademark registration, Form TM – P (the form used to file a request for trademark assignment) is to be filed along with the prescribed fee. It is always advisable to seek professional assistance while going for trademark assignment in India .
Below is the list of documents required for the process of trademark rights transfer –
1. Power of Authority (from Assignor & Assignee)
Two parties are involved in this process. The assignor is the party who assigns the rights (in part or whole) to another party. The assignee is the one who receives the trademark rights in the process of trademark assignment.
If the trademark assignment is done with the help of a legal professional then each party is required to execute a power of authority. In the present context, the power of authority is a document that grants a right to legal professionals to carry out representations and pursue legal procedures related to trademark assignment for any individual or business.
2. Trademark Assignment Agreement
In the process of trademark sale, parties are required to execute a written agreement to make such trademark assignment enforceable. The trademark assignment agreement is a document which is also an acknowledgement of the transfer of rights and responsibilities from one person to another.
This is the only document that clearly shows –
- The change of ownership of a trademark.
- The interest of the parties involved.
- The rights and obligations associated with the trademark assignment, consideration to the assignor for such transfer etc.
The assignment agreement is enforceable in India if the parties duly execute it with appropriate stamp duties, notary and signature of the parties. The parties can keep a copy of the trademark assignment agreement. The originals are to be submitted to the appropriate trademark registry to give effect to the change of title of the trademark.
A trademark Assignment agreement comprises various entitlements, rights and responsibilities of various parties. It also anticipates the expectations and risks of the parties involved. It is advisable to consider a professional’s view before performing a trademark assignment in India.
3. No Objection Certificate (executed by the Assignor)
A no-objection certificate encapsulates the assignor’s wish to transfer the trademark ownership. In this document, the trademark assignor also agrees that they have no objection to such a transfer of right.
4. Goodwill Certificate (given by the Assignor)
This document is required when the trademark is being transferred wholly along with the trademark owner’s goodwill.
Basically, a goodwill certificate provides that, the assignor has a right to all entitlements related to the qualitative value in a trademark and the assignor is transferring his/ her rights in a trademark to another person. Generally, this document allows the assignee to acquire all entitlements and values associated with the trademark and a right to unconditionally use the trademark for any of the goods and services.
One of the benefits of a goodwill certificate is that it allows the assignee to use the trademark for any type of goods and services, whereas, a trademark assigned without a goodwill certificate can be used for a specific set of goods and services only. Here, a ‘specific set of goods and services only’ means that it covers only those categories of goods and services in which the assignor has traded before.
5. Acceptance of trademark rights (provided by the Assignee)
This is another important document which should be submitted to the trademark registry during the process of trademark assignment. The trademark rights can be transferred by the assignor and the assignee needs to accept the same as well.
Therefore, this document consists of the written acceptance of the assignee for the right transfer. Sometimes, this document is also merged with the trademark assignment agreement. It highlights the acceptance of trademark rights by the assignee.
This was the list of commonly used documents for the transfer of a trademark. The trademark assignment process is a complex one, therefore you should always seek an expert’s advice for trademark assignment or trademark registration related service/s. Know more about the transfer of trademark rights through trademark assignment .
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Rohan Sharma is a lawyer with a flair for writing. Rohan has a special interest in the domain of Intellectual Property Rights and possesses an extensive experience in the fields of trademarks, copyrights and industrial designs. Aiming to understand the intricacies of law as a concept and its symbiosis with advancing technology and changing societies, the author seeks to examine the nuances of law.
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India: Gloster's Appeal Allowed To Exclude Trademark From The List Of Assets In Insolvency Proceedings
In the recent matter of Gloster Cables Ltd v. Fort Gloster Industries Ltd. & Others, Hon'ble Mr. Justice Rakesh Kumar Jain heard an appeal filed by the aggrieved appellant - Gloster Cables Ltd, which was incorporated as Crest Cables Private Ltd in 1995 by the Modi Family and the Rathi Family, both having equal stakes in the company, which was set up to take over the assets of the sick company Sputnik Cables Pvt Ltd and commenced the business of manufacturing cables. In 2004, S. K. Bangur Group was included as an investor with equity participation and the name of the entity was changed from Crest Cables to Gloster Cables Ltd.
The Corporate Debtor, Fort Gloster Industries Ltd, the first Respondent in the present appeal, was incorporated in 1890 and owns the Trademark 'GLOSTER' duly registered in Class 9. The Second Respondent Gloster Limited was incorporated in 1923 and is in the business of Jute Products. A former employee of the Corporate Debtor filed an application bearing no. CP (IB) 61/KB/2018 under Section 9 of the Insolvency and Bankruptcy Code, 2016. The Resolution Professional, Respondent No. 3, had filed a Resolution Plan as shared by Respondent No. 2, which was duly approved by 73.21% of the members of the CoC.
While this plan was pending approval, the appellant, Gloster Cables Ltd, filed an application bearing no. CA (IB) 713/KB/2019 before the Kolkata Bench of National Company Law Tribunal seeking intervention to exclude the Trademark "GLOSTER" from the list of assets of the Corporate Debtor as the same was duly assigned to the appellant herein.
However, the application was dismissed by the Adjudicating Authority via order dated 19.09.2019, accepting all three objections regarding the assignment being hit by the ongoing IBC proceedings that had commenced before the registration of the mark in favour of the appellant herein.
Aggrieved by the impugned order, the appellant filed the present appeal before the National Company Law Appellate Tribunal Principal Bench, New Delhi, vide Comp. Appeal (AT) (Ins) No. 1343 of 2019. The Appellate Tribunal examined the arguments of all the parties afresh, and the first point was that the Corporate Debtor was referred to BIFR in 2001, and vide order dated 10.09.2001, the Corporate Debtor was instructed not to dispose of any assets (which includes the impugned Trademark GLOSTER) without approval from BIFR.
Since the assignment deed dated 20.09.2017 was executed after this order, it was alleged that the assignment would be null and void. Further, the appellant was aware of the Insolvency and Bankruptcy Proceedings that were underway and the consequent moratorium on any disposal of assets of the Corporate Debtor but still proceeded with the assignment of the Trademark GLOSTER. There were further allegations of undervaluation of the trademark in the said assignment deed executed on 20.09.2017. Lastly, the Registration Certificate in respect of the trademark GLOSTER was issued to the appellant on 27.09.2018, even though the CIRP was initiated on 09.08.2018. As such, the assignment and the registration were both hit by the IBC proceedings and were null and void.
The Counsel for the appellant clarified the above points by stating that the Corporate Debtor and the Appellant had executed a Technical Collaboration Agreement on 02.05.1995 by which the appellant was permitted to use the trademark GLOSTER for a period of 8 years at the cost of paying 2% royalty on the ex-works price of the products sold or leased. This technical collaboration agreement expired by efflux of time, and a new technical collaboration agreement was executed on 02.05.2003 granting the right to use for a further period of 5 years on payment of 1% royalty. On 29.07.2004, the arrangement between the Corporate Debtor and the appellant herein changed when a long-term exclusive license-to-use agreement was executed for an annual royalty of Rs 2 lakh and a consolidated license fee of Rs 3 crores. The new agreement was valid for 33 years and had an auto-renewal clause.
Thereafter, the appellant executed a loan agreement in favour of the Corporate Debtor on 10.11.2006 by way of hypothecation of the trademark GLOSTER. The loan amount of Rs 10 crores was repayable within 5 years, i.e. on or before 30.12.2011, failing which 15% interest will be charged on the loan amount. The deed of hypothecation of the trademark was executed on 31.01.2008, by which the trademark was hypothecated in favour of the appellant herein by way of first and exclusive charge.
Since the BIFR order of 10.09.2001 was already subsisting on date, the Corporate Debtor, on 15.07.2008, also executed a Supplementary Trademark Agreement by which the Trademark GLOSTER was assigned in favour of the appellant for a consideration of Rs 10 lakhs only. Further, it was stated in this agreement that the assignment would become effective without any further act or deed, i.e. actions or documentation, once the BIFR order dated 10.09.2001 gets discharged or vacated. Further, during the period 2008-2010, all parties before BIFR, including banks, were fully aware of the status of the transfer of exclusive rights and exclusive use of the trademark GLOSTER in favour of the appellant as per the disclosures made by Allahabad Bank (now Pegasus Asset Reconstruction Company) and that an additional amount of Rs 3 crores was paid by the appellant to the Corporate Creditor in lieu of these rights.
Thereafter, on 1.12.2016, SICA was repealed, and all references made to BIFR under SICA stood updated unless the company in question made a specific application to NCLT within 180 days of the repeal of SICA. However, no such application was made by any of the creditors of the Corporate Debtor, and the 180 days expired on 29.05.2017. Consequently, in terms of the Trademark Agreement dated 15.07.2008, the trademark stood assigned to the appellant herein. As a matter of abundant caution, on 20.09.2017, the appellant executed a Deed of Hypothecation with the Corporate Debtor to enable the record of the assignment of the trademark GLOSTER along with the associated goodwill in favour of the appellant in the records of the Trademark Registry.
Only after all these activities were over that CIRP was initiated, an IRP was appointed on 09.08.2018, and a moratorium was imposed on any sale or transfer of assets of the Corporate Debtor. At this late stage, the trademark GLOSTER was already conclusively assigned and delivered to the appellant by the corporate debtor. The only thing that was left for the appellant to do was to get the assignment recorded in the Trademark Registry to show that they were the rightful owners of the mark. An application for the same was made on 25.08.2018 and the recordal of the name of the appellant in the trademark registry was affected on 17.09.2018.
Decision of the Appellate Tribunal
Consequently, the appeal was allowed, and the trademark GLOSTER was considered to be excluded from the list of assets of the Corporate Debtor on the date that the moratorium was announced and IRP was appointed, i.e. on 09.08.2018. The Appellate Tribunal held that it is a mere recordal of the name that happened after the moratorium was announced on 09.08.2018 and not the actual transfer or assignment of the trademark by the Corporate Debtor to the appellant. The transfer of title was effected by the deed of assignment and not by recording the name of the appellant on the Trademark Register. The consideration was also not found to be inadequate at any stage, and as such, the Appellate Tribunal set aside the order of the Kolkata Bench of NCLT and allowed the appeal in favour of the appellant, thereby upholding the rights of the appellant to exclusive use and ownership of the trademark GLOSTER for due consideration paid to the Corporate Debtor much before the initiation of the CIRP proceedings.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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