Trademark Assignment In Delhi NCR

Trademark Assignment in Delhi NCR

The process of transfer of the proprietary rights of the property by the trademark owner to any other person is called Trademark Assignment. Trademark is like an asset which can be transferred from one person to another. The transfer of ownership from one person to another can be temporary through licensing or permanent through an assignment. The only difference between trademark assignment and trademark licensing is that in case of an assignment of the trademark all the rights associated with the trademark is transferred whereas in trademark assignment only few restricted rights to use the brand or mark are given to the third part. The Trademarks Act, 1999 governs the transfer of rights by a trademark owner to any other person or entity. Trademark Assignment can be done in three ways:- (a) Complete Assignment of Trademarks (b) Partial Assignment of Trademarks and (c) Assignment without goodwill.

• Complete Assignment of Trademark

In complete assignment of trademark, the owner of the trademark transfers all the rights associated with the trademark to another entity. The transfer of rights includes the right to further transfer, earn royalties etc.

• Partial Assignment of Trademarks

In partial assignment of trademark, the owner of the trademark may retain certain rights during transfer of the rights. The transferor may retain the right to further transfer, to earn royalties etc.

• Assignment with goodwill

This is an assignment where the owner of the trademark assigns the trademark along with giving the assignee the right to use the same trademark for the same product i.e. transfer of the rights and values associated with the trademark.

• Assignment without goodwill

This kind of assignment involves the transfer of rights and not the values associated with it i.e. the assignee was restricted by the owner of the trademark to use the trademark for the product he uses it for.

Reasons for Trademark assignment in Delhi NCR

Republic Day which is celebrated on 26th January is one of the three national festivals of India. The Republic Day parade which takes place in Delhi is the center of attraction in these festivals. The parade on the Rajpath starts from the Rashtrapati Bhawan and ends near India Gate. It includes the display of valor by the three types of forces, the Army, the Navy and the Air Force; the diverse display of culture from different states followed by the display of tableaux from different ministries. Beating Retreat marks the end of the 3 day celebration on 29th January.

Following are the reasons for trademark assignment in Delhi:-

• Opportunity for the assignor to en-cash the established brand value

Once the trademark is registered, it is sufficient to gain confidence of the customers as they feel that the owner of the trademark cares about the brand. Trademark assignment allows the brand owner to unlock the value of the brand.  The owner of the trademark can derive benefits from the registered trademark. The owner of the trademark can assign the trademark to any other person and en-cash the value he has established through the trademark.

• The Assignee enjoys the established brand value

After trademark assignment, the new owner of the trademark can use the name of the trademark for deriving maximum benefits in the concerned business. Trademarks which are already registered are easy to remember and spread and it will be difficult for an enterprise to apply a good trademark which can satisfy the corporate image and easy to memorize and spread. Hence, buying a trademark from the owner of the trademark will be a good choice to enter a market with an already well known brand rather than building a new one.

• Takeover of business concerned with trademark

The most important reason of the transfer of trademark rights is takeover of the business which is not performing better in the market. The owner of the business having registered trademark takeover those businesses which do not have the capacity to yield higher profits from the business they are operating.

Why do I need trademark assignment in Delhi NCR

Trademark Assignment in Delhi is required for the following reasons:-

• Expansion of Business

Generally, trademark assignments are carried out with the motive of expanding the business. Through trademark assignment, the owner of the trademark tries to enter into a new relevant market for the purpose of the expansion of the business and to raise its profits.

• To change the terms of the business with its co-owners

If the owner of the trademark is facing problems with his co-owners on the terms and conditions of the agreement of the business, he can cancel that agreement and has the option to come in a new agreement with another person through trademark assignment. Trademark assignment allows the owner of the trademark to change the terms of the business but this could only be possible in partial assignments. In case of complete assignments, the ownership of the trademark gets transferred to another person and the owner of the trademark has no longer rights over the trademark.

• Conversion of business into any other form

Generally, transfer of trademark rights is done with the aim to derive more profits from the business. In some cases, it is intended at expanding the business but most of times it is done for converting the business from one form to another because the business is not performing better in the marker. In order to get benefits from the business, the owners of the trademark change the business into another form with the same registered trademark.

Process of offline or online Trademark Assignment in Delhi

Following processes is required to be followed for transfer of trademark Rights in Delhi:-

• Assignment of a registered mark

According to Section 38 of the Trademarks Act, 1999, a registered trademark can be assigned or transmitted in full or part, with or without the goodwill of the business. Further, Rule 68 of the Trademarks Act, 2002 states that the assignments must be registered with the Registrar of Trademarks.

• Assignment of an unregistered mark

In order to assign an unregistered trademark, a person is required to file a request on form TM-16.  An unregistered trademark can be assigned with or without the goodwill of the concerned business.

·         Following things needs to be incorporated in the trademark assignment deed:-

1. The primary requirement is that the deed must be in writing where the name of the assignor must be similar to that in the Register of the Trademarks.
2. It is necessary for the assignor to specify the territorial extent of the assignment.
3. The marks to be assigned to the assignee must be specified clearly by the assignor.
4. The assignor must specify the consideration to be paid by the assignee clearly.
5. The most important part is to specify whether the assignment is with goodwill or not. Also, the assignor is required to mention the effective date of assignment.

Fees:

The fee for the trademark assignment in Delhi is to be paid according to the assigning of the trademark with respect to the date of acquisition of proprietorship. 

Minimum Requirements of offline or online Trademark Assignment in Delhi NCR

The applicant is required to make an application under Form TM-P (DIRECTION OF REGISTRAR FOR ADVERTISEMENT WITHOUT GOODWILL- official fee INR 2700) for making a record of assignment without goodwill of business. The application has to be made within 6 months from the date of assignment which can be extendable by another 3 months as per prescribed forms. The application has to be made requesting the Registrar to advertise the trademark assignment in the Trademark Journal in order to give notice to the public of the assignment without goodwill of business. After the advertisement of the trademark assignment, an application for recording the assignment can be filed with the TM-M/TM-P form. The application form shall be accompanied by a copy of the advertisement notice as issued by the Registrar along with a copy of the TM-P (DIRECTION OF REGISTRAR FOR ADVERTISEMENT OF ASSIGNMENT WITHOUT GOODWILL) form.

Following are the minimum requirements for offline or online Trademark Assignment in Delhi:

1. Trademark Assignment Deed
2. Parties Details
3. Details of Trademark to be assigned
4. Form Filling
5. Power of Attorney