Trademark rights are transferrable through assignment agreements. When a trademark is assigned by an owner to another party, its ownership is conferred upon the other party, either completely (with goodwill) or for a limited number of products or services (without goodwill). It usually involves a one-time payment. Such an agreement (often called an assignment deed) can be signed even if the trademark is unregistered; creative designers, for example, are often asked to assign ownership of the work to the entity that commissioned it. Registered trademarks can also be assigned, of course. In both cases, the asignee must apply to the Registrar within six months.
Advantages of a Trademark Assignment
Through an assignment agreement, the brand owner is able to unlock the value of the brand, which, until this point, only had value on paper. The assignee, on the other hand, could be significantly better off entering a market with an already well-known brand, rather than building a new one entirely.
In case of a dispute related to the trademark, legal rights would easily be established through the deed. The Registrar ensures that all the checks are in place by examining the validity of all the clauses in the agreement and publishing the assignment in the Trade Marks Journal.
Trademark Assignment Process
Our representative will get in touch to know whether you will be the asignee or the assignor. We will also explain the documents you would need to provide for the entire procedure, though there may be a request by our lawyers for additional documents and proofs, depending on the request. A lawyer will contact you to understand your requirements in detail and recommend the clauses to be included. The deed will be drafted and sent to both parties for their signatures.
We will then get the deed notarised and, file the necessary forms (TM-16, TM-23 or TM-24). The assignee has to direct the Registrar to examine and then publish the assignment in the Trade Marks Journal within 6 months or the application would be treated as null. You will receive a receipt regarding the same at the end of this process.
The Registrar will first examine the agreement to check that no confusion will arise from the asignment. Particularly in case both brands will be using the trademark in different industries, this could take some time. Our lawyers will keep you up-to-date with the status. Once the Registrar is satisfied, the assignment will be published in the Trade Marks Journal. The Registrar will consider the agreement and response to the publication and accordingly allow or disallow the assignment entry in the Trademark Registry.