How to Transfer Trademark Rights in India?
With time and continuous advancements in almost every industry worldwide, trademarks has become one of the fastest emerging and most exclusive Intellectual Property Rights (IPRs) in India. A trademark, which identifies and differentiates the products or services of a business from those of others, is beneficial for not just brands but consumers as well. It generates the goodwill that bestows businesses with target customers and assists people in purchasing quality products. Another reason that makes any trademark popular amongst the Intellectual Property industry and several other sectors is its ability to get transferred. Indeed, the transfer of trademark rights is beneficial for both – who gives the rights and who takes them. Are you excited to have insight into the process of making profits through transferring trademark rights in India? Read below:
The Indian Trademarks Act, 1999 states that for transferring Registered Trademark rights, there is a need to opt for either trademark assignment agreement or trademark licensing agreement.
(I) Trademark Assignment
Trademark Assignment is a way to legally transfer the trademark rights of the assignor (original owner) to the assignee (person or company interested in obtaining the rights). In legal terms, it refers to the legal transfer of proprietary rights over products and services. The transfer under a trademark assignment is possible in the following ways:
(a) Complete Assignment: As the name depicts, this assignment facilitates the transfer of full ownership, i.e., all the rights, thus allowing the assignee to use, share, and process the mark in whatever way he wants while maintaining a distance from legal issues like Trademark Infringement. After the complete assignment of the trademark, the assignor hold no control over the brand, logo, or anything related to it.
(b) Partial Assignment: The partial assignment, which restricts the transfer of trademark rights to specific services or products, is beneficial for those who don’t want to lose complete control over their rights. It bestows the assignor with the option to share his rights while adding terms and conditions that limit the assignee’s control to some products. It means the assignee can use the trademark rights for only those things that are permitted by the assignor.
Procedure for Assignment of a Trademark
- Create a trademark assignment application, including the request for the transfer of trademark rights. As per the Trademark Law, there is no hard and fast rule for who should make the application. Hence, anyone whether the assignor or the assignee can make the application, but it must be in FORM TM-P format and holds the terms of the transfer as well as details of both the parties.
- File the prepared application before the registrar. As the delay in applying in front of the registrar can result in an additional fee, be cautious about filing within six months of proprietorship’s acquisition.
- Obtain the Registrar’s Permission. Though the transfer of trademark works as per the needs of the assignor and assignee, yet it is mandated to follow the registrar’s direction before the expiry of the assignment. Although the period of assignment expiry in India is for six months, it is extendable under the registrar’s supervision.
- Understand the registrar’s directions and according to them, advertise the assignment. After that, provide the registrar with copies of both advertisements and directions.
- At last, the registrar after getting satisfied with the application, advertisements, and all documents will permit the transfer of the said trademark from the original owner to the new proprietor. By registering the name of the assignee in the legal record, the registrar ensures that now the assignee can use the assigned trademark rightfully.
(II) Trademark Licensing
It allows the transfer of a trademark while imposing some restrictions that prevent the licensee (new owner) from owing full ownership over the rights of the licensor (original owner). Although the concept of licensing appears a bit restrictive, it is beneficial for both licensor and licensee. It helps the former to expand his market and upsurge the number of consumers whereas the later to enjoy the royalties obtained with the trademark.
Assuredly, registering a licensing agreement is not necessary, still, the parties should do so to enjoy the expected benefits without facing issues. The procedure to Register a Trademark license agreement is similar to registering the assignment agreement. So if you want to go for trademark transfer via licensing, there is a need to make the application followed by filing it before the registrar. If you are a licensor and don’t want to create the application, you can ask the licensee to do so as the law states that anyone out of the two can create the application that must be in TM-28 form format. Once satisfied with the application, documents, and other formalities, the registrar will allow both of you to use the transferred trademark rights as per the terms mentioned in the license agreement.
The concept of transfer of trademarks is a tactic that generates benefits for both – who provides the rights and who obtains the rights. So if you also want to join the race and make profits with this approach, the above-given guide will help you for sure. However, before proceeding, it is recommended to have a deep insight into every fact related to this IPR, no matter whether it is related to the simple filing of the Trademark Application or any other aspect. For more visit: https://www.kashishipr.com/
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