How To Transfer Trademark Rights In India?

 

The idea of Trademark has changed over time in India. The rights associated with registered trademarks are increasingly seen through the prism of intangible assets. In fact, during the past ten years, there has been a huge increase in the legal knowledge of trademark registration online and intellectual property.

 

Indicating a brand identity is a trademark (such as Tata Tea, or Red Label). One of the intellectual property rights that is changing the most quickly is the trademark, which is governed in India under the Indian Trademarks Act, 1999.

 

 

 

The Act handles every issue of law related to trademarks. It offers many ways to transfer trademarks and related rights and authorises doing so.

 

The two choices accessible to a trademark owner who wants to transfer their rights are as follows:

 

Assignment of a trademark

A technique of transferring trademark rights from the owner to another person is through trademark assignment. Legally speaking, it entails the transfer of a product's or service's trademark rights. Whether a trademark is registered or unregistered, with or without the assignment of goodwill, it can be transferred.

 

You can accomplish it in one of the following ways:

 

• Complete trademark assignment

A full assignment of a trademark makes it easier for the owner to transfer all associated rights to a third party. These privileges include the ability to use the mark, collect royalties, sell or transfer the mark to another party, and more.

 

For instance, if Flipkart sells Walmart the rights to its trademarks, it has completely assigned those rights and is no longer the owner of the brand, logo, or any other associated intellectual property.

 

• Partial Assignment of a Trademark 

It is not usually essential to assign a trademark completely. A trademark may be partially assigned if desired. 

 

When a trademark is assigned in part, the assignee's rights are only transferred concerning a limited number of goods or services.

 

For instance, if the owner of the trademark "Parley" deliberately inserts language into the assignment agreement stating that the assignee is only permitted to use the mark in connection with dairy goods, the mark cannot be utilised for any other market than dairy.

 

Step-by-Step Process for Assigning a Trademark

 

Step 1 - Preparing an Application

Either the assignee or the assignor of the trademark may apply to a trademark assignment. The assignor and assignee may also apply jointly to carry out such a transfer. The application should include information on the transfer's terms, the current and potential owners, etc. The FORM TM-P must be used to apply.

 

Step 2 - Submitting

File the TM-P form application with the Registrar of Trademarks after it has been prepared. This is to be done within six months of the trademark's acquisition. Although filing can be postponed, there are additional costs associated with it.

 

Step 3 - Getting the Registrar's order

If the transfer involves goodwill or a registered trademark, the procedure is slightly different. In both of these situations, the trademark registrar's directive is necessary before the period of six months has passed (starting from the day on which the assignment is made). This time frame might even be extended, but only with the Registrar's permission.

 

Step 4 - Advertise the assignment of a trademark

The manner in which the assignment is to be advertised may also be specified by the Registrar under their discretion. The advertisement shall be published by the Registrar's instructions. A copy of the advertisement and a copy of the contract must be provided to confirm compliance.

 

Step 5 - Final approval and transfer 

The Registrar shall formally transfer ownership of the relevant trademark from the original owner (assignor) to the new proprietor whenever satisfied with the validity of the application, advertisement, and other documentation (assignee).

 

As the new owner of the aforementioned trademark, the Assignee's name must be entered into the register. The assignee may then use the trademark by the provisions of the trademark assignment agreement.

 

Relevant Information Assignment Deed Requires Mention of:

• The assignee's ability to file a lawsuit for trademark infringement against any third party. After the arrangement is finished, the assignor will disclaim all rights to and interests in the aforementioned trademark.
• A declaration that the assignee would have the right to use and enjoy the trademark for their business without interference or opposition from the title owner or anybody claiming claim under them.

 

 

Trademark Licensing

In the event of trademark licencing, full ownership of the trademark does not pass to a different business. The licensee is only allowed to utilise it in a limited capacity. 

 

Both the licensor and the licensee benefit from licence agreements involving trademarks. While the licensee can benefit from the royalties produced by the trademark, the licensor gains access to a wider market and consumer base.

 

Even though registering a licensee or a licencing agreement is not required, it is recommended. because it enables the licensee to enforce their trademark rights against third parties. 

 

Within six months of the agreement, the licensee must register with the Registrar of Trademarks. 

 

A request in the form of Form TM-28 must be submitted by the licensor, licensee, or both parties. At the time of registering a licencing agreement, the aforementioned application must additionally be accompanied by the following paperwork:

 

• A copy of the application form with the licensee's and the grantor's signatures attested
• An affidavit from the licensee outlining the agreement's terms and conditions
• Any applicable power of attorney for the agents
• Any additional record that the Registrar could ask for as proof

 

The Registrar shall make an entry into the register to that effect if they are satisfied that all the paperwork and other formalities are properly included in the process. 

 

The entry must include information such as the application and agreement dates.