• info@tmguru.in
  • Mon - Sat 10:00 am - 6:00 pm. Sunday CLOSE

Trademark Assignment

A trade mark assignment occurs when a business is purchased or when a group of companies undergoes a restructuring. In this process, the rights, title, and interest in the trade mark are transferred to the new legal owner, either completely or partially

Engaging in the sale and assignment of intellectual property can be a complex task, and therefore, we advise against attempting it independently. At tmguru, our team is here to assist you by skillfully navigating the negotiation process of your assignment agreement. Our goal is to ensure that the agreement aligns with your desired objectives and delivers the desired outcome.

Assigning a unregistered trademark

One common question that often arises is whether an unregistered trademark can be assigned. This query arises because the Trademark Act or Rules do not explicitly outline a specific procedure for such cases. The answer to this question is yes, it is possible to assign a trademark before it is registered. However, in order for the assignment to be recognized by the registrar, an application must be filed along with the necessary documents, including an affidavit and a properly stamped assignment deed. Failing to provide these required elements may result in the assignment not being accepted or recorded by the registrar.

Assigning a registered trademark

To assign a registered trademark, it is necessary to have a written assignment or transmission deed, which means that oral agreements are not sufficient for this purpose. In order to execute assignment deed it is required

  • To be executed by the assignor and witnessed by witnesses
  • Clearly mention the assignment is with or without goodwill in trademark
  • Date of assignment
  • Payment of proper stamp duty as per central stamp act
  • Details of the trade mark for which assignment deed is executed
  • Affidavit to be executed by bother Assignor and Assignee

After the Deed of Assignment has been duly executed by the parties involved, it needs to be submitted to the Registrar of Trademarks in order for it to take effect. Upon filing the application for assignment, the Registrar of Trademark will notify the Assigner regarding the assignment and provide a 30-day window for any potential objections to be raised. If no objections are received within this period, the Registrar will proceed to change the name of the trademark's proprietor and officially record all the relevant documents.