A trademark assignment is a legal document that transfers ownership of a trademark to another person or entity. A trademark assignment can be in either of two forms: an exclusive trademark license or a non-exclusive trademark license.
An exclusive trademark license grants the licensee the right to use the trademark in exchange for royalty payments (either ongoing or one-time).
The licensee owns the right to use the mark exclusively within certain geographic areas and/or with respect to certain products or services. These licenses are often used by manufacturers who want to outsource production to third parties or licensees who want to sell products under their own trademarks but want someone else to handle manufacturing and distribution.
They are also common between licensors and licensees who want more control over how their marks are used than what would be available through a non-exclusive trademark license.
A non-exclusive trademark license grants the licensee the right to use a mark within certain geographic areas and/or with respect to certain products or services but doesn’t give them exclusive rights over its use by others.
Trademark Assignment services
Lex N Tax Associates is a team of legal professionals who are dedicated to providing the best trademark assignment services in Delhi. We understand that each client has unique needs and requirements, so we provide our clients with personalized trademark assignment services. Our lawyers thoroughly understand trademark laws, which helps them provide you with high-quality service.
At Lex N Tax Associates, we are committed to offering you the best legal advice when it comes to trademarks. Our team is highly qualified and experienced in all aspects of trademark law. Whether you want to register your trademark or transfer it to another party, our attorneys can help you.
Trademark Assignment process
When intellectual property rights are transferred to another party, whether with or without goodwill, this is known as an assignment of the trademark. The assignee, the person who gains standing through the assignment of a registered trademark, must submit an assignment application in the prescribed format.
To register the assignee as the subsequent proprietor of a trademark, either the assignor or the assignee must fill out a Form ™-P.
The trademark application must be filed with the trademark office within six months after the ownership acquisition date. If the application is delayed, the charge may change.
The regulation from the trademark registrar is required within six months of the assignment’s delivery date or within the lengthy extended period that the registrar grants in the event of an assignment without goodwill or assignment of a certified trademark.
To notify the public of the assignment, as the registrar may specify.
It is the responsibility of the assignee to provide the office with a copy of the registrar’s direction and assignment advertisement so that they may verify whether or not the instructions have been followed.
After receiving the assignment application and supporting documentation, the registrar, if satisfied, will record the assignee as the trademark’s owner and the assignment’s terms in the trademark register.
To avoid any potential for confusion or deception, a trademark cannot be assigned by its owner if doing so would result in the formation of exclusive rights in various people with respect to the same or comparable items or services.
As a result, no two people can have an exclusive right to the same or similar goods or services. Just one company must use a trademark for the same or similar goods and services to avoid confusion.
Multiple Territorial Use Restriction
An assignor may not transfer ownership of a trademark if doing so would give different people exclusive rights to use the mark in different regions of India for the same or similar goods or services.
When assigning a trademark, the assignor may not create a situation in which different persons in different parts of India have an exclusive right to the same or similar items or services supplied or provided outside of India. As a result, it is illegal to transfer rights in one region of India to another for the same or similar goods and services.
The value of the brand, which has just been paper worth until now, can be realized by the brand owner through an assignment agreement. On the other hand, the assignee might fare much better by entering an existing market under an established brand name rather than creating an altogether new one from scratch.
In the event of a trademark dispute, the proceeding would serve to establish the holder’s legal rights promptly. The Registrar verifies the legality of the contract’s provisions and announces the assignment in the Trade Marks Journal so that everyone knows it’s official.
Whenever a business owner decides to sell or otherwise transfer ownership of an asset, including a trademark, he assigns those rights to the buyer. Common methods of determining assignments are as follows:
Complete assignment of logos
The owner of a trademark may assign all of his or her rights in and to the trademark to another party. This includes the right to register the trademark with relevant authorities, collect royalties, and use the trademark in commerce.
For illustration, assume that “A," the owner of “XYZ," enters into an arrangement with “B" to sell the entire association. A will no longer have or acquire any rights to “XYZ" after this.
Partial assignment of logos
In a partial assignment, only some goods or services are transferred. The right to make transfers, collect royalties, etc., could be protected and upheld by the owner.
Partial assignments are also possible, such as when the owner of both a tea and a biscuit whole transfers proprietary rights solely in relation to the tea whole while retaining rights over the biscuit whole.
NOC (No Objection Certificate) from the trademark’s original owner.
Documents required for Trademark Registration:
Protecting your brand from unapproved use and infringement is as simple as registering your trademark. The government spelled out the procedure for registering a trademark in India in greater detail.
The business owners can now register their trademarks in just a few months. When applying, it is not necessary to provide any original documents. A scanned copy of the original document is sufficient for the application process.
Individuals and sole proprietorship
It’s simple for anyone in India to register a trademark. Neither a legal nor a business entity need be established in order to file for trademark protection. In addition, a sole proprietorship can register a trademark using the same paperwork as an individual.
It is sufficient to have a black-and-white copy of the logo. If the logo can’t be found, the trademark can still be filed for the word alone.
Officially completed and signed Form-48. It’s a letter of permission and endorsement from the applicant to the Trademark Attorney, giving the latter permission to act on the applicant’s behalf in registering and filing the trademark application.
Identity proof of the individual or proprietor.
Address proof of the individual or proprietor.
Trademark Assignment with Goodwill
This strategy promotes and facilitates the sale of ownership rights and the image value associated with a trademark in a suitable industry. Upon completion of this series of steps, the assignee grants the chosen party the right to use the trademark’s goodwill in the marketplace to learn about and create future results of concern unrelated to the product supplied by the assignor.
Trademark Assignment without Goodwill
The design prevents the assignee or purchaser from using the trademark in connection with the assignor’s goods, as defined by the assignor or seller of possession or property rights. This shows that the assignor and the trust, following such a course of action, use the same trademark to collaborate across disciplines. Gross trademark tasks are those that involve the most obvious use of a brand.
Why Choose Lex N Tax Associates
Lex N Tax Associates is a legal firm based in India. It offers services related to trademark assignment and trademark renewal.
The company provides services related to Intellectual Property Rights (IPR) in India, including but not limited to trademark registration, trademark renewal, and assignment of trademarks.
The company has experience in handling trademark assignments and renewals, as well as all other aspects of IPR management.
The Lex N Tax Associates team has expertise in handling all kinds of trademarks, including logos, slogans, and taglines. They have also worked on cases involving copyright infringement, patent rights, and trademark disputes.