Trademark Assignment
Trademark Assignment Process in India
A trademark is intellectual property, and the owner has the same rights as with other assets, including the right to sell, license, or transfer it. Under the Trade Marks Act, 1999, a trademark transfer or assignment is the legal process of transferring trademark ownership from one party (the assignor) to another (the assignee). This can be done through a Trademark Assignment Agreement or Trademark Licensing.
When a trademark is assigned, the ownership and legal rights of the registered brand are transferred to the new party. This may or may not include the transfer of goodwill. Importantly, the assignment must be recorded in the Trademark Register to be valid.
Key Points About Trademark Assignment
To assign a trademark, the assignor must create and file a Trademark Assignment Agreement with the Registrar of Trademarks.
The agreement should be filed within six months of execution.
A trademark can be transferred by agreement, deed, or licensing arrangement.
Assignments usually involve a one-time payment, and rights granted may be limited or complete, depending on the terms.
Different Types of Trademark Assignment
In India, trademark assignment can take place in various forms depending on the needs and requirements of the parties involved. Each type of assignment is recognized under the Trade Marks Act, 1999, and the agreement must be drafted accordingly. Below are the main types:
1. Complete Assignment
The assignor transfers 100% ownership of the trademark to the assignee.
The assignee becomes the sole and exclusive owner, while the assignor loses all rights and claims over the mark.
2. Specific or Partial Assignment
Only limited rights are transferred to the assignee.
The assignor grants permission to use the trademark only for specific products, services, or territories.
3. Assignment with Goodwill
The assignor transfers not only the trademark but also the goodwill of the business associated with it.
This means the assignee can use the trademark for all goods and services connected to the brand’s reputation.
4. Assignment without Goodwill (Gross Assignment)
The trademark is assigned without transferring the goodwill of the business.
The assignee can use the mark only for specific products or services, while the assignor retains rights for the rest.
Example:
If a company assigns a trademark with goodwill, the assignee can use it across all product categories and benefit from the brand’s established reputation.
If assigned without goodwill, the usage is restricted to only those products/services specifically mentioned in the agreement.
Features of Trademark Assignment
A Trademark Assignment provides numerous benefits for both the assignor (current owner) and the assignee (new owner). Some of the key features include:
Valuation of Trademark – Trademarks hold significant monetary value. Assignment allows owners to convert this value into cash by transferring rights to another party.
Valid Legal Proof – A Trademark Assignment Agreement acts as a legally binding document, serving as strong proof in case of disputes, ensuring the rights of both parties are protected.
Established Brand Leverage – The assignee benefits from acquiring an already recognized and established trademark, saving years of effort in brand-building.
Monetization of Brand – The assignor can monetize the time, effort, and investment spent on brand development by transferring ownership for financial gain.
Easy Brand Building – The new owner gains access to a ready-made brand, eliminating the need to build one from scratch.
Protection of Intellectual Property – Trademark assignment helps safeguard intellectual property by ensuring ownership and registration remain valid and enforceable.
Documents Required for Trademark Assignment
Provide the exact company name you wish to register in Cardiff. Make sure it is clear, unique, and easy to spell.
To complete a Trademark Assignment in India, the following documents are generally required:
Certificate of Trademark Registration – Proof that the trademark is officially registered.
Particulars of Assignor & Assignee – Identity and address proof of both parties.
No Objection Certificate (NOC) – From the original owner of the registered trademark.
Assignment Agreement – A detailed description of whether the assignment is with goodwill or without goodwill.
Registrar’s Advertisement Copy – Proof of advertisement/public notice as directed by the Registrar.
Signatures of Parties & Witnesses – Mandatory for validation of the assignment agreement.
Notarization / Oath Commissioner Verification – Legal attestation of the agreement.
Proof of Execution – Date and place of signing the agreement.
Power of Attorney / Authorization Letter – If filed through an agent or attorney.
Other Supporting Documents – Any additional documents required as per the case.
Procedure for Trademark Assignment
The Trademark Assignment process in India involves a series of legal steps to ensure a valid and enforceable transfer of ownership. Below is the step-by-step procedure:
Application Filing – The process begins with filing an application for assignment, either by the assignor (current owner) or the assignee (new owner), or jointly.
Form TM-P Submission – The application must include all transfer details and be filed using Form TM-P with the Trademark Registrar.
Registrar Filing – Once completed, the application is officially filed with the Registrar of Trademarks.
Timeline – The assignment procedure must be completed within six months of acquiring proprietorship.
Registrar’s Advertisement – The Registrar specifies how the assignment will be advertised in the Trademark Journal.
Submission of Advertisement Proof – A copy of the published advertisement, along with the Registrar’s directions, must be submitted.
Final Transfer – After verifying all submitted documents, the Registrar officially records and transfers the Trademark ownership from one party to another.
Categories of Trademark Assignment
Trademark Assignment can be carried out in different forms depending on the business requirements and the rights being transferred. The main categories include:
Complete Assignment – In this type, the trademark owner transfers all rights of the registered trademark to the second party. The assignee gains full ownership, including rights to use, sell, and earn royalties from the trademark.
Partial Assignment – Ownership is transferred only for specific products or services. This means the assignee can use the trademark in defined areas, while the assignor retains rights for other categories.
Assignment with Goodwill – Both the rights and the value associated with the trademark, including reputation and brand recognition, are transferred to the assignee. This allows the buyer to use the brand name for all goods or services.
Assignment without Goodwill – Also known as Gross Assignment, this type restricts the transfer of goodwill. The assignee cannot use the brand for products already associated with the trademark but can use it for new categories of goods or services.
Frequently Asked Questions
A company name search ensures that your chosen business name is unique, legally compliant, and not already registered with Companies House UK. It helps you avoid legal disputes, trademark issues, and confusion in the Cardiff business market.
If your desired name is already registered, you’ll need to choose a different name or modify it. Using a taken name could result in rejection by Companies House or potential legal issues. Our experts can help you brainstorm alternative names that are compliant and market-ready.
It’s not advisable to use a name that’s too similar to another company, especially within the same industry. Similar names can confuse customers and risk trademark disputes. A company name search helps you identify these risks early.
For a company name search in Cardiff, you may need:
Proposed company name
Business entity type (Ltd, LLP, Partnership, etc.)
Jurisdiction (Cardiff / UK)
Owner or shareholder details (if applicable)
Business description
A “high probability” result means your proposed company name is likely to be available, but further checks are recommended. This is why our detailed Cardiff Company Name Search Report includes both identical and similar names for clarity.
Certain words are restricted under UK law (e.g., “bank,” “insurance,” “government”). If you want to use them, you’ll need special approval from regulatory bodies. We guide you through this process if your Cardiff business requires such terms