Trademark

How to Effectively Transfer Your Trademark Ownership in India?

calendar03 Apr, 2023
timeReading Time: 4 Minutes
How to Effectively Transfer Your Trademark Ownership in India?

A trademark is anything that sets apart a company’s goods or services from those of other businesses, whether it is a symbol, design, a slogan, or phrase, a logo or a combination of all. Consumers can identify between various brands in the marketplace due to trademarks, which act as a distinctive identification of the source of goods or services. A strong trademark can help businesses develop strong brand identification and reputation, which may result in improved consumer loyalty and sales. It can also function as a valuable asset that can be sold, licensed, or franchised. Trademarks are protected by laws, and infringement can result in legal action and damage.

A trademark registration gives businesses legal protection and the only right to use the mark in specific classes of goods or services. It also helps in preventing competitors from using a mark that is similar to yours, which can confuse the consumers and lessen the value of your original mark. As a result, trademarks are a crucial element of branding and intellectual property protection for any company doing business today.

What Does It Mean To Transfer Trademark Ownership?

A trademark’s current owner must assign their rights and interests in the mark to another individual or organization in order to transfer ownership of the mark. In relation to the goods or services for which the trademark is registered, the new owner of the trademark will have exclusive rights to use it and will be able to stop others from doing the same or something similar. According to the terms and circumstances set forth by the trademark owner, ownership of a trademark can be transferred from one person to another through the procedure of assignment and transmission.

Transfer of trademark ownership can take place in a variety of circumstances, such as when two businesses are merging or are sold. Also, it may take place if the owner of a trademark desire to license or franchise their trademark to a third party. In these situations, the trademark ownership transfer is a crucial step to make sure the new owner has the legal authority to use the mark and defend it against infringement.

The formal transfer of trademark ownership necessitates the completion of legal paperwork and adherence to all relevant rules and legislation. Verifying the trademark’s validity, creating an assignment agreement for the trademark, submitting an application for transfer to the trademark registrar, and paying the required costs are all part of the transfer procedure. The new owner will be given a new trademark registration certificate in their name after the transfer is finished.

Types of Transfer of Ownership in Trademark

  1. Complete the Assignment
  2. Partial Assignment
  3. Assignment with Goodwill
  4. Assignment without Goodwill

Pre- Requirements for Transfer in Trademark Ownership

The trademark assignment procedure in India must meet a specific standard in order to be valid. Those requirements are as follows:

  • In order to assign a trademark, the assignor or the owner must have both the intention and authority to do so.
  • A trademark assignment must be made in writing.
  • The assignor and assignee must be the two people used for identification.
  • The execution of a legitimate Trademark Assignment Agreement
  • Valid identification of the papers of both the assignor and the assignee. 
  • Correct identification of the marks
  • Proper consideration 
  • Includes the sale of goodwill associated with a trademark

Documents Required for Transferring Trademark Ownership

  • A PAN Card
  • Adhaar Card
  • Trademark Assignment Agreement
  • No Objection Certificate
  • Power of Attorney
  • Passport Size Photo
  • Documents for identification from both the assignor and assignee
  • Trademark Certificate

Process of Transferring the Trademark Ownership

Following is the process of transferring the Trademark Ownership:

  • Execution Of The Assignment Agreement

The Assignment Agreement must be written and signed as a first step. It is the official document by which the assignor consents to transfer trademark ownership to the assignee in exchange for just compensation. The terms and conditions of the assignment are given out in this document by both parties.

  • Filing The Assignment Application With The Trademark Registry

The next step is to submit an application for trademark assignment in the Form TM-P to the Registrar of Trademarks. The application must be submitted with the necessary supporting documentation. Also, the application for a trademark assignment must be submitted within six months following the transfer of ownership.

  • Processing The Application

The Trademark Registry will process the application after the application and necessary documentation have been filed with the Registrar of Trademarks.

  • Advertising Of The Assignment

The final step is to advertise the trademark assignment in the manner and mode specified by the Registrar of Trade Marks. Once it has run, the applicant must present a copy of the advertisement to the Trademark Registry.

  • Approval Of Assignment Application

The trademark registrar will then carefully review and confirm the information and supporting documentation included in the assignment application. The application will be approved if the registrar is satisfied with it. The registrar will then update the Register of Trademarks with the necessary adjustments.

Benefits of Transferring Trademark Ownership

Following are the benefits of Transferring Trademark Ownership:

  • Monetization

Selling a trademark to a party who will profit from its value enables the original owner to monetize their asset.

  • Licensing

Without owning the company, a new owner can earn money by licensing the trademark to third parties.

  • Asset Protection

To shield a trademark from creditors or other legal disputes, it can be transferred to a different legal entity or trust.

  • Business Expansion

Granting the new owner the right to use the trademark in trademark ownership can facilitate business in other countries or industries, a transfer of expansion.

Risks of Transferring Trademark Ownership

  • Loss Of Control

The initial owner forfeits control over the trademark’s use and public perception.

  • Reputational Harm To The Brand

A new owner may use the trademark in ways that harm its reputation, which may have a detrimental effect on the business of the first owner. 

  • Dilution Of Brand Value

Overuse or abuse of a trademark by a new owner can diminish its brand value and harm the reputation of the original owner’s company.

  • Legal Disputes

Legal disputes: If the transfer of trademark ownership is improperly handled or if the new owner infringes on the trademark rights of others, it may result in legal disputes. 

Conclusion

In conclusion, transferring ownership of a trademark is a necessary process that requires careful consideration and attention to legal requirements. The Trade Marks Act 1999[1] lays out the legal framework for trademark transfer in India, and it is essential to ensure that all legal requirements are fulfilled to complete the transfer process. If you are considering transferring ownership of a trademark in India, it is recommended that you seek legal advice to ensure that the process is conducted smoothly and efficiently. This will help to avoid potential legal issues and ensure that the transfer is legally valid and enforceable.

Also Read:
An Overview On The Transfer Of Trademark Rights Through Trademark Assignment

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