Overview of Trademark Assignment

Trademark assignment refers to the transfer of ownership of a trademark from one party to another. This process involves transferring all or part of the trademark rights to a new owner. The transfer can occur with or without the associated goodwill of the business.

For registered trademarks, it is mandatory to record the assignment with the Trademark Registrar. The trademark can be transferred through deeds, agreements, or other legal methods between the two parties. Typically, the transfer involves a one-time payment and is formalized through an assignment deed. Whether the trademark is registered or unregistered, the assignee must file an application with the Registrar within six months to complete the assignment process.

Categories of Trademark Assignment in India

India recognizes several types of trademark assignments. Depending on the nature and requirements, the parties involved will fall into one of the following categories:

1. Complete Assignment A complete assignment involves the full transfer of all rights to the trademark, including the right to further transfer, earn royalties, and more. In this case, the original owner retains no further rights to the trademark.

   Example: If "A" sells their brand’s trademark entirely to "B," after the transfer, "A" will no longer have any rights to the brand.

2. Partial Assignment A partial assignment involves transferring only specific rights to the trademark, such as rights limited to certain products or services. The trademark owner retains rights over other areas not covered in the agreement.

   Example: If the owner of the trademark “xyz” agrees to assign it for animal-related products only, the trademark can only be used for those specific products, not for others.

3. Assignment with Goodwill In this type of assignment, both the trademark rights and its associated goodwill are transferred to a third party. The goodwill refers to the value tied to the trademark, such as reputation and customer base.

4. Assignment without Goodwill This type involves the transfer of trademark rights but without transferring the associated goodwill. Often referred to as a “gross assignment,” the buyer receives only the trademark rights, not the business value tied to the brand.

Forms and Fees for Trademark Assignment

To record an assignment, the following forms must be filed:

• For pending trademarks: Form TM-M must be filed with a fee of INR 900 per mark.
• For registered trademarks: Form TM-P must be filed with a fee of INR 9000 per mark.

Restrictions Under the Trademark Act, 1999

The Trademark Act, 1999 imposes certain restrictions on trademark assignments, including:

• Use by multiple parties: A trademark cannot be assigned in a way that allows it to be used by different parties in different regions for the same goods and services.
• Creative rights: A single trademark cannot be assigned to more than one person for the same category of goods or services.