Like any other asset, trademarks can be given to new owners. The transfers could be for a limited time via licensing or for a long time via assignment. The process of transferring trademark ownership, either with or without the business’s goodwill, is known as “assignment of trademark”. To put it another way, it’s the transfer of ownership rights to the owner’s property. An assignment can be created in the following ways:
Complete assignment of trademarks In a complete assignment, the trademark owner transfers all rights associated with the trademark, including the right to further transfer, earn royalties, and other rights.to a different entity.
For instance, A, the owner of “xyz,” signs a contract with B to sell his brand to another party; after this, A loses all rights to “xyz.”
Partial assignment of trademarks In a partial assignment, ownership only transfers to a single product or service. The owner might keep the right to transfer it again, get royalties, etc.
For instance, A, who owns a biscuit and a tea brand, transfers only the tea brand’s proprietary rights and keeps the biscuit brand’s rights; this is known as a partial assignment.
This is an assignment in which the owner transfers the trademark’s rights and value in relation to the product it sells;
For instance, A, who owns the “TH” trademark for the production and sale of watches, can give the assignee the right to use the trademark for the same product.
Assignment without goodwill This type of assignment places restrictions on the assignee’s use of the trademark for the products he sells. That is, the buyer does not receive the goodwill associated with the owner’s brand in relation to the product that is already being sold under that brand. This means that both the assignor and the assignee can use the same trademark for different products or services.
For instance, if the owner of the trademark “TH” decides to assign it without goodwill and uses it for the production and sale of watches, the assignee can use the trademark “TH” for any product other than watches.
It is essential to report the change in ownership to the Trademark Registry as soon as a trademark is assigned. To ensure that the ownership details are reflected in the records, specific forms with associated fees must be filed.
Transfer of a trademark that is registered:
Trade Marks can be transferred in whole or in part, with or without the business’s goodwill, according to Section 38.On Form 23 or Form 24 of the Trade Marks, each transmission or assignment must be registered with the Registrar of Trade Marks.68 of the 2002 Trademarks Rule).
When a single trademark is assigned or transferred:
The official fee is Rs. if it is made within six months of the proprietorship’s acquisition.5000;
If it is done after six months but before one year has passed since the proprietorship was acquired, the official fee is Rs.7,500;
If the request is made within a year of the proprietorship’s acquisition, the official fee is Rs.10,000.
In the event that more than one trademark is assigned:
The official fee is Rs. 5000 for the first mark and Rs. 1000 for each additional mark if made within six months of the date of proprietorship acquisition;
The official fee is Rs. 7,500 for the first mark and Rs. 1500 for each additional mark if made after the expiration of six months but before the acquisition of proprietorship;
The official fee is Rs.10,000 for the first mark and Rs.2000 for each additional mark if made after a year from the date of proprietorship acquisition.