Trademark Assignment

The term trademark assignment is defined under section 37 of the Trademark Act, 1999. As per the definition, the trademark assignment means transferring the owner’s right, interest, and title in a trademark and a brand mark.

In simple words, the process of transferring the right and ownership of the trademark to any other person is known as a trademark assignment.

Some of the advantages of the trademark assignment (concerning both the owner and the buyer) are listed hereunder-

The trademark assignment enables the owner of the trademark to encash the value of his brand.
With the help of a trademark assignment, the assignee can obtain the rights of an already established brand.
The assignment of the trademark supports both the assignor and the assignee to expand their respective business.
In case of any dispute, the trademark assignment agreement would enable the assignor or the assignee to establish the legal right.

Types of trademark assignment

There are four types of trademark assignments-

Partial assignment,
Complete assignment,
An assignment with Goodwill, and
An assignment without Goodwill/ Gross assignment.

All the four types of trademark assignments are briefly explained hereunder-

Partial assignment– Under the partial assignment, the assignor transfers only limited ownership with regard to specific products/ services.
Complete assignment- Under the complete assignment, entire rights with respect to the registered trademark are transferred by the assignor to the assignee.
An assignment with Goodwill- Under ‘assignment with Goodwill’, the assignor of the trademark transfers the rights of the trademark as well as the value of the trademark to the assignee.
Gross assignment or Assignment without Goodwill- Under such type of trademark assignment, while transferring the trademark, the assignor will restrict the buyer’s right. The assignor here restricts the buyer from using a brand of the product which is already being used by the assignor. In nut-shell, the goodwill attached to the brand is not transferred to the assignee.

Pre-requisites and procedure for trademark assignment

The list of pre-requisites for the trademark assignment is-

The trademark assignment must be in writing.
The assignment must have the following two identifying parties-
An assignor (owner of the trademark); and
An assignee (buyer of the trademark).
The assignor must have the intention and consent for the trademark assignment.
The trademark assignment must be for proper adequate consideration.
Following is the list of documents required for trademark assignment-
Trademark assignment agreement,
Trademark certificate,
NOC from the assignor,
Identified documents from the assignor and assignee.