You are currently viewing How To Transfer Trademark Rights in India?

How To Transfer Trademark Rights in India?

Loading

Last Updated on June 19, 2024 by Swetha LLM

An important form of intellectual property for all types of businesses is, as we all know, a trademark. Similar to other tangible goods, it is also highly valued. It requires an online application to shift ownership of a trademark. Online trademark registration and alteration are just two examples of the many things that can be done.

Certain trademarks are also more valuable than some material goods. So, you have the authority to sell, transfer, or lease it after registering a trademark in India.

What does it mean to Transfer Trademark Rights?

Trademark Rights is transferred from one entity to another. The transfers may be temporary due to a license, but they might also be permanent due to the assignment. The process of transferring trademark registration and ownership to a different person is called a trademark assignment, also called a trademark Transfer of Rights registration occasionally.

The parties cannot transfer their trademarks to one another until a Trademark Assignment Agreement has been approved by each party.

A temporary trademark transfer is also known as a trademark licence. An intellectual property right granted from a businessman’s asset is another name for trademark assignment or trademark transfer of ownership.

Two Forms of Transferring Trademark Rights

There are two main ways that a trademark may be transferred through Rights. Look at them closely:

  • Assignment of Trademarks: An assignment entails transferring trademark ownership from one party to another. This process is carried out online through the IP India portal. You have the option to assign your trademark ownership with or without goodwill when you do so through assignment.
  • Trademark Licensing: A trademark proprietor may license a part of their ownership rights to a third party who has been given permission to do so. In most cases, a trademark licensing agreement governs all trademark ownership transfers through licensing. Only a limited amount of time is transferred during this operation.

Advantages of Transferring Trademark Rights

  • Profit from the value of your trademark and take pleasure in the time and resources you made an investment in building the brand.
  • Aids in maintaining the viability of the brand and commercial growth.
  • In addition, the assignee gains from not having to start from scratch in terms of developing a brand and reputation.
  • Due to the reality that it protects both the assignor’s and the assignee’s rights, trademark assignments are reliable evidence and have legal standing in courts.

Reasons for Transferring Trademark Rights in India

Gaining an advantage from owning a trademark is usually the aim of the trademark registration process. Still, there are a number of circumstances in which a trademark owner would have to give ownership to a different entity. Some of them are listed below:

The Trademark Owner’s Death

The trademark’s ownership passes to the heirs in testament or intestate upon the death of the owner. The trademark must be lawful in order to qualify. It shouldn’t have the “abandonment status” as a result. Here, “abandoned” refers to a trademark application’s status. This specific status indicates that the trademark is no longer protected.

Business Sale

Intellectual property is a valuable resource. As with other possessions, a trademark can be sold together with the business. as long as the business name is used while registering it. As a result, if a third party buys a business, they can use this site to learn how to assign trademark rights.

Owner’s Name Change

When a company merges or amalgamates, the owners notify the Trademark Registry that any trademarks registered under the firm’s name will be transferred to the new company. All of the purchased company’s intellectual property is now owned by the new company by virtue of the trademark assignment agreement.

Modification in Organizational Structure

A task is beneficial for companies that plan to modify their business structures. A sole proprietorship may utilize trademark assignment to transfer ownership and rights of its trademarks in the instance that it wishes to convert from one business framework to another, such as from a sole proprietorship to a private limited company.

Company Growth

In order to join into agreements for commercial partnerships, a license agreement is a common procedure for changing trademark ownership. Since it permits a variety of enterprises to access untapped market possibilities, this is growing in popularity.

Alternative Forms of Trademark Assignment

  • Complete Assignment: This refers to the full transfer of all rights.
  • Partial Assignment: This is the transfer of rights for just a part of the goods and services.
  • Assignment with Goodwill: The value a brand has built up in the marketplace is also moved when goodwill is transferred.
  • An Assignment made without Goodwill– It gives the assignor the ability to limit the assignee’s rights to the product he has already used. This suggests that multiple items may utilize the same trademark and/or services by the assignor and assignee.

Documents Needed for a Trademark Ownership Transfer

You’ll need the following:

  • Trademark Assignment Deed: The assignment deed is the most crucial document proving the trademark ownership transfer. If you want to carry out licensing, the trademark licensing agreement will take the place of the assignment deed.
  • Power of Attorney: You must give the Indian lawyer permission to work on your behalf when you hire them to help with the process of transferring trademark ownership. With the power of attorney, you might be able to achieve this with ease.
  • No Objection Certification: The transferor must declare in writing in a Notice of Intent (NOC) that all rights are being transferred.
  • Identification Records: It is mandatory for the assignor and assignee to provide identifying documents, like PAN or Aadhaar details, to verify their nationality, age, and place of abode.

How is Trademark Rights Transferred?

The following actions must be taken in order to transfer trademark ownership in India:

Draft Assignment Agreement

The process of transferring trademark ownership begins with the assignor and assignee drafting a formal assignment document. Furthermore, every particular pertinent aspect of the assignment must be covered by this agreement for transfer of ownership.

Keep a record at the Registry

Any modifications to a trademark’s ownership must be reported to the trademark registry. The applicable form must be submitted to the trademarks registrar by the parties involved in the trademark assignment. After that, the registry will review each submission and update the records appropriately.

Notification

When parties decide to assign or transfer trademark ownership, they must notify all relevant parties, vendors, and other parties of the change. This lessens the likelihood of more disagreements between the parties.

Update Documents

The party to the assignment must amend all of its books and records once the register accepts the trademark assignment. It must also make sure that a copy of the assignment deed and the trademark registry order are always available.

Keeping Up

It becomes the new trademark owner’s responsibility to manage the trademark after it is officially issued and all the details are updated. Additionally, they are accountable for continuing to use the trademark.

Trademark Transfer Fees in India

Below is a list of trademark transfer fees in India. Additionally, you can look at the online trademark transfer costs in India.

  • There is a statutory charge of Rs 5,000 for trademark assignments that are lodged within six months of the date of ownership acquisition.
  • The statutory cost for trademark assignments made after the six-month mark but before the twelve-month mark following the date of proprietorship purchase is Rs 7,500.
  • If a trademark assignment is made more than a year after the date of obtaining ownership, there is a statutory tax of Rs 10,000.

In Conclusion

As a result, if both parties agree and understand the procedures involved in assigning or transferring a trademark, the process of transferring ownership can be finished quickly. Furthermore, once an online trademark registration has been received, this step is taken. It supports the growth of the brand and ensures protection across a range of products and services.

To transfer trademark ownership, don’t hesitate to get in touch with Kanakkupillai’s professionals.

FAQs

1. Can a trademark’s owner be changed?

Through trademark assignment, it is possible to alter who owns a trademark.

2. What is the process for assigning a trademark to someone else?

By signing a formal agreement of assignment and adhering to the guidelines outlined above, you can transfer a trademark from one person to another.

3. What is the process for transferring trademark ownership upon death?

If a trademark owner passes away and their ownership is transferred, you must provide their officially issued death certificate from the government. Furthermore, the legal heirs are the only ones who will receive the trademark in such a scenario.

4. Who is the owner of a trademark?

A trademark is commonly owned by the company using it. No rights are granted by merely having the concept for a trademark. A trademark could occasionally be owned by one company or individual and used under license by another company.

5. Is it allowed to transfer a trademark in India?

The rights of the trademark holder may be transferred through an action known as trademark transfer. A trademark is the sole right of its owner to use a mark. Among the privileges granted by trademarking is the ability to transfer a trademark.

Swetha LLM

Swetha, LLM, a lawyer with skills in writing legal content, is passionate about simplifying complex legal concepts and engaging readers with her insights of nuanced legal ideas. She is able to preserve the accuracy of legal material while adjusting the tone and style to fit the audience.