Assignment of Trademark and Relevant Forms in India

Assignment of Trademarks refers to the legal mechanism through which the person holding the trademark rights(i.e., the assignor) relinquishes and transfers his rights to another person (i.e., the assignee), who then assumes full control over the trademark. It involves a transfer of ownership that authorises the assignee to use the trademark exclusively for their commercial benefit. This must be done through a registered assignment agreement. The assignment of a trademark allows a dual advantage: the trademark owner can monetise his trademark value from the financial gains realised through the assignment of the mark. The assignee benefits from leveraging the established value of the brand, saving his resources in brand promotion, and allows him to operate in multiple locations.

There are four types of assignments:

• Complete assignment- transfer of all rights associated with the trademark.

• Partial assignment- transfer of trademark only with respect to certain goods and services.

• Assignment with goodwill- the assignee is free to use the trademark with respect to any classes of goods and services, including the class for which the trademark was originally used.

• Assignment without goodwill- where the assignee can use the trademark for any goods and services other than the ones for which the mark was originally used. As the mark no longer carries the value it had built for its original class of goods and services, the assignee must build a separate goodwill.

  
  

The Indian Trademark Act, 1999, deals with the assignment of trademark under Chapter V in Sections 37-45. It allows for the assignment of both registered (Section 38) and unregistered (Section 39) trademarks. The procedure is outlined as follows:

•  Application to the Registrar, alomg with the prescribed documents.

•  Review by Registrar and final decision within three months.

• If the application is allowed, the Registrar will make an entry in the register by adding the details of the assignment.

• The Registrar may refuse registration if there is a pending dispute between the parties regarding the assignment’s validity.

  
  

Form TM-P under the Trademarks Act, 1999, serves as the main form for the assignment of trademarks. It is titled ‘Application for Post-registration changes in the trademarks’ and consists of three parts:

• Part A consists of application details, including fees to be paid, name of the proprietor, mobile number, e-mail, address or, where the applicant does not carry out any business in India, an address for service. There is also space for the details of the applicant's agent to be added, if any. The details of the requested amendment (including assignment) and the type of mark- whether standard, collective, certification, or series marks- must be provided in Part A.

• Part B consists of details providing the ‘Purpose of Request’. Under (e), the applicant must specify whether the assignment is with or without goodwill and the date of the assignment deed. A copy of the statement of case (which provides the background facts) and of the draft deed of proposed assignment are required to be submitted.

• Part C consists of the details of the person making the application, including his name, signature, and authority (that is, whether he is authorised to assign the trademark) and the details of the documents attached to the application.

  
  

Rule 68 of the Trademark Rules, 2002 provides that the Form TM-24 must be filed to register the title of the assignor. A joint request can also be made by the assignor and the assignee to register the latter as a subsequent proprietor under Form TM-23. Every form must contain full particulars of the instrument of title. Where the assignment is without goodwill, the application must also state that the trademark was used in respect of any classes of goods and services and that the assignment was made not in connection with the goodwill of the business. Also, where the trademark is being assigned without goodwill, according to Section 42 of the Act read with Rule 74 of the Rules, an application must be made mandatorily to the Registrar within six months (extendable to three more months) from the date of assignment, for directions on the advertisement of the application.

There are certain restrictions to the assignment of trademarks where multiple exclusive rights would be created in different people, thereby resulting in the splitting of trademark rights on a territorial basis and causing confusion in the minds of consumers. However, the proprietor may still make an application under Form TM-17 (where multiple rights would be created for same/similar goods or services) or Form TM- 19 (where rights would be created for different persons across India), along with a statement of case and a copy of the assignment agreement. The Registrar is empowered to allow such an assignment where he believes it would not be contrary to public interest.

The Registrar may demand an Affidavit under Form TM-18 for verification of title, along with proof. The fees to be paid for the registration of an assignment under Form TM 23/24 are as follows:

• If the application is made within six months of acquiring proprietorship: INR 5000

• If the application is made within 12 months of acquiring proprietorship: INR 7500

• If the application is made after 12 months of acquiring proprietorship: INR 10,000

  
  

Trademark assignment has allowed for the swift growth of the business industry by enabling the exploitation of well-established brand value. The Trademark Act and Rules in India lay out a quick and easy procedure to be followed for seeking registration of the assignee as the ‘subsequent proprietor’ of the mark, thereby providing him security in the commercial exploitation of a trademark originally owned by another.