Trademark Transfer Process in India

Trademark gives the owner of the trademark the right to use the mark. It confers many rights upon the owner, which also includes the right to transfer the trademark. Trademark transfer refers to the right to transfer the title of the trademark from the original owner to the assignee. Assignee is the person who receives such a right. In this article, we shall look at the legal framework governing the trademark assignment process in India.

Types of Trademark Assignment

There are four ways of transferring your trademark:

• Complete assignment– This means assignment of all rights, including the right to sell, earn royalties, etc.
• Partial Assignment– The assignment of trademarks pertaining only to certain goods and services is called Partial assignment.
• With Goodwill– Goodwill of a business means the brand value of the business. When the trademark is transferred with goodwill, the proprietor gets to use the brand value of the trademark also. 
• Without Goodwill– This means when the assignment of trademark is executed only for the trademark and not for the associated brand value.

Process of Trademark Transfer

Every registered trademark is assignable and transmissible. It can take the following forms:

• The transmission or assignment of the trademark may be done with or without transferring the goodwill of the business. For example- Tata taking over the trademark of Jaguar’s business in India. It means that Tata will also take over the goodwill of the brand entirely.
• The assignment may also be done for some or all of the goods or services for which the trademark has been assigned.

To transfer the Trademark, you can follow the steps given below:

• Application for trademark assignment

The application for trademark assignment can be made by the Assignor or by the Assignee or by both. Both can make requests jointly.

• Filing Form TM-P

The next step involves filing Form TM-P by furnishing all the required details of the transfer.

• Documents Submission

Once the Form TM-P is filed, you are required to submit all the necessary documents required for trademark assignment to the Trademark registrar within 6 months from the date of acquisition of proprietorship.

• Application Processing

When the documents and application is successfully submitted, the application shall be processed.

• Advertisement of Assignment

When your application is specified, the applicant is required to make an advertisement for the assignment in such a manner as directed by the registrar. Submit the copy of the direction of the registrar and advertisement of the assignment in the Registrar’s office.

• Approval

The registrar will verify the application on receiving the trademark transfer application along with the documents. Once the verification is completed and if the registrar is satisfied, then he shall approve the application. However, the registrar will register the assignee as the proprietor of the trademark. The registrar shall enter the assignment details in the register.

Essential requirements of Trademark Transfer

• As per the Trademarks Act^[1], the assignment can be done only by an agreement in writing between the parties concerned. Therefore the assignor, as well as the assignee, should execute a legal document for transferring the trademark.
• It is the legal title that is sought to be transferred in trademark. Therefore the details regarding the trademark like Brand name, application number, class number, etc should be specified in the agreement.
• The operative part of the agreement should mention that the person transferring the trademark is the actual owner. The assignor should have all the rights, titles, and interests in the trademark. It should also establish that the assignor has the full right and lawful authority to transfer the ownership of the trademark.
• This part of the agreement shall state the amount paid by the assignee to the assignor in exchange for the trademark assignment. It establishes that the rights, title, and interests in the trademark has an allowance. You can also mention if the transfer of trademark also include the transfer of goodwill.

Restrictions on Trademark Transfer

As you would know that the process of trademark assignment is procedural therefore, the registrar may refuse to register a trademark assignment in some instances.

In case of registered trademarks, the Trademarks Act 1999 puts certain restrictions. It is on the assignment of a registered trademark where there exist possibilities of creating confusions or interference with another mark. 

The restrictions on the assignment cause the creation of an exclusive right in more than one person for the same goods or services. Therefore the registrar might not allow an assignment which can provide rights over a trademark. This is for multiple parties for the same description of goods or services or those that are associated with each other.

What are the benefits of Trademark Transfer?

The benefits of transferring trademark are listed below:

• Expansion of Business

It helps in the expansion of business as assignor and assignee get the right to collaborate with the brand.

• Pre-established brand

If you have got the right on an already established popular brand through trademark assignment, you don’t have to invest in money and time in creating and marketing of your brand. Assignee doesn’t have to create a new brand and get it registered. 

• Security for assignor and assignee

For a valid trademark assignment, an agreement has to be executed between parties that includes both the assignor and the assignee. Such a legal agreement acts to be a valid proof and is admissible as evidence in the court of law if any dispute arises among parties. Therefore it safeguards the rights of both assignor and assignee. 

Conclusion

For expanding your business, trademark transfer can be initiated, but you must also execute a legal agreement for such transfer. Not having an agreement can have adverse consequences. Therefore it is advised to get the agreement ready. You may take the assistance of a professional while dealing with Trademark, be it trademark registration, transfer, or anything else. 

Read our article:All about Trading Trademarks – Assignments, Mergers and Transmissions