Kinds of Trademark Assignment Agreement
- Assignment of Intellectual Property Rights Agreement
- Assignment and Transfer Agreement
- Intellectual Property Assignment
- Transfer of Trademark Rights
- Trademark Purchase and Trademark Assignment Agreement
What is the Need of Trademark Assignment Agreement in India?
It is a legal road that helps in transferring ownership or a trademark or service mark when needed. A transfer of ownership comes into the play when a product or company is being sold or purchased by another person or organization.
What are the types of Trademark Assignment Agreement?
||Common Law or Unregistered
|Uses Registered trademark symbol (R) or ®
||Uses the Trademark symbol ™ or (TM)
|Formally registered with the USPTO
||Uses the Service mark symbol (SM)
|Enhanced rights because the public is on Notice
||Brand names and Logos are automatically protected when a company uses the mark in the normal course of commerce
USPTO is a federally registered mark that allows you to track the assignment on your trademark Query Site.
What are the consequences of not using the Trademark Agreement?
Without the Trademark Assignment, there will be a dusky vision on the record who currently owns the mark. Hence, the following are the consequences of not using the agreement
|Loss of time
1. Time spent establishing that mark was not transferred
|Loss of time
1. The higher burden of proof that the trademark was transferred
|Loss of Money
1. Another business uses your mark without paying you
|Loss of Money
1. Unable to capitalize the value of goodwill
|Loss of Image
1. Business goodwill affected
2. Customer Confusion Of Product
|Loss of Image
1. Unable to federally register
2. Receive a cease and desist letter
Forbes has valued Google’s trademark at a whopping $44.3 billion, while the Microsoft trademark came in right behind at a value of $42.8 billion.
What should be included in the Trademark Assignment Agreement?
The Trademark Assignment Show agreement should cover the following detail which is as follows
- Who currently owns the trademark and who is going to be the new owner
- What the mark consists of and any associated trademark registration
- Where any disputes will be handled if in case any chaos arises
- Why the Assignor has the right to transfer the mark and associated goodwill.
- When the trademark is transferred to the new owner officially
- How much will the assignee pay be the new owner of the mark?
How does Trademark Assignment work in India?
The transfer of trademark takes place in various forms. The Owner can transfer all its rights with respect to a mark to another entity in different ways.
Lets’ understand this with two case’s example-
Example 1 - The proprietor of a brand ABC Pvt Ltd sells his trademark completely through an agreement with XYZ Pvt Ltd. After this transfer, ABC Pvt Ltd doesn’t retain any rights with respect to the brand or trademark. This is a complete assignment of transfer of trademark.
Example 2 - Mr. Santram the proprietor of a brand used for pickles and sauces and spices product. He assigns the rights in the brand with respect to only the spicy products to Mangatram and retains the rights in the brand with respect to pickles and sauces.) This is called partial assignment of trademark
The road doesn’t end here there are following types of Trademark Assignment which are as follows discussed-
- Assignment with Goodwill: the rights and value of a trademark as associated with the product is also transferred to another company.
- Assignment without the Goodwill- where the owner restricts some rights of the next owner to use such brand for the products that are being used by the original owner. Therefore, in this case, the goodwill is attached to such brands with the respect to the product.
Procedure to documentation the assignment of a trademark with the Registry
- Assignment of the unregistered trademark- Section 39 stipulates that unregistered trademark could also be allotted or transmitted with or without the goodwill of the business involved.
- Assignment of the registered trademark – the trademark can fully or partly allot or transmit with or without the goodwill of the business to another entity.
The fee for the trademark assignment differs according to the nature of the assignment.