How to Transfer Trademark Ownership in India

Trademarks have emerged as a vital aspect to stand out the products and services of a company in the competitive business world. A trademark is considered a valuable element, related to intellectual property, differentiates a specific product from other available products in the same category, and builds the identity of the company. Sometimes, there are adverse times when businesses may need to transfer trademark ownership to India due to various reasons such as business restructuring, mergers, acquisitions, or personal decisions.

This blog excellently delivers a complete guide on how to transfer trademark ownership in India, including its other important aspects such as types of trademark ownership, its legal transferring procedure, documents required, etc. Let’s dive into the blog for detailed information.

What is Trademark Ownership?

Trademark ownership is the advantage or authority to use a trademark that identifies products or services of a brand. Any individuals, corporations, or businesses can be considered trademark owners. And they get exclusive rights over a registered trademark through trademark ownership. The trademark owner is allowed to –

• Utilize the trademark for their products
• Prevent other businesses from using a similar trademark
• Assign, license, or sell the trademark

What is the need for transferring trademark ownership?

Sometimes, companies undergo an acquisition, merger, or association process, and in this condition, the trademark rights are either transferred together with the business or sold individually. In this process of selling individually, an assignment contract is implemented. Usually, the trademark rights are transferred together with the business to the new company.

Implementing trademark ownership transfer in India is a significant process for businesses focusing on gaining their brand rights due to associations, mergers, or other vital decisions.

The process of transferring trademark ownership is legally considered a Trademark Assignment and the entire process is executed by the Trade Marks Rules 2017, and Trade Marks Act 1999. A trademark assignment should be precisely implemented to make sure that the trademark transfer is legally authentic.

Some common circumstances leading to Transfer Trademark Ownership

• The dismissal of a trademark owner.
• Sale of Business or Trademark individually
• Disunion of Business and successive activity.
• Change in Name of the Owner or form of business
• Purchase of an existing business with goodwill.

Time duration of Trademark Ownership Transfer The transfer of trademark ownership is a legal process that takes some time to execute smoothly. Here are the details-

• Filing the assignment application – 1-2 weeks (approximately)
• Examination & review – 3-6 months (Approximately)
• Publication & opposition period – 4 months (approximately)
• Final registration – 1-2 months (approximately)
• Total Completion Time: 6 to 12 months (if there is no opposition).

What Are the Trademark Ownership Government Fees? For a smooth execution of transferring trademark ownership, some trademark ownership transfer fees are assigned.

• Assignment without goodwill – 9,000 per trademark (for online mode).
• Assignment with goodwill – 18,000 per trademark.
• Legal fees (differs based upon legal assistance).

How to Transfer Trademark Ownership in India?

To protect and manage intellectual property in India, trademark plays a significant role. Trademarks not only assist in establishing a brand in the market but also in building trust among customers. In some circumstances, trademark rights are transferred by some businesses or individuals to other companies or individuals, and here the concept of Trademark Assignment comes into existence.

How to transfer trademark ownership in India? Trademark Assignment is a legal step of trademark transfer that is nothing but involves transferring trademark ownership rights from one party to another. Here, the first party is the assignor and the other party is the assignee. It is a systematic process of transferring the trademark, along with maintaining brand reputation, company goodwill, and its exclusive rights. The assignor hands over the rights and benefits related to this trademark, while the assignee receives the trademark, its responsibilities, and benefits related to it, with this process.

To start the trademark transfer process, both the parties (assignor and assignee) should move with a legal agreement which is a Trademark Assignment Agreement. The purpose of the agreement is to define the terms and conditions of the transfer process, details of the trademark, assignment scope, and any particular conditions or restrictions where both parties agree.

Steps for Transferring Trademark Ownership

1. Due Diligence: Both parties should conduct in-depth due diligence to confirm that the trademark is free from any legal barriers and that the assignor is legally capable of transferring the right. This should be done before starting the assignment process.
2. Negotiation and Agreement: The first party or assignor and the other party or assignee should discuss the terms of the assignment, its financial considerations, the scope of transferring rights, and any other difficulties. These points are mentioned in a Trademark Assignment Agreement.
3. Execution of Assignment Deed: A formal assignment deed which will explain the points agreed upon, should be prepared. This deed is required to be signed by both parties and contains the trademark details and any related goodwill.
4. Filing Application with the Registrar: The assignee is supposed to apply to the assignment with the Registrar of Trademarks having Form TM-P. This trademark application is required to be submitted within six months from the date of assignment with the assignment deed and the relevant trademark ownership transfer fee.
5. Review of the Registrar and Advertisement: Next, the Registrar reviews the application to confirm whether the compliance meets legal requirements. Having satisfaction, the Registrar sent the assignment to be advertised in the Trademark Journal to view the public and request any objections related to the assignment.
6. Addressing Oppositions: If an advertisement draws any oppositions, then it must be settled through legal action. If there are no objections raised within the fixed time duration, the assignment moves to the next step.
7. Final Registration: After settling the oppositions and completing all rules, the Registrar makes the assignee or the other party as the new trademark holder of the trademark in the official register and finishes the transfer.

Complete Procedure to Transfer Trademark Ownership in India

Transfer of trademark ownership India, involves a few steps to ensure legal validity and implement assignment. Below is the complete guide:

Step 1: Conduct Due Diligence Before transferring, both parties should run due diligence to –

• Verify the recent trademark ownership.
• Check for any active legal cases or disputes.
• Utilize the value of the trademark.
• Ensure meeting with legal requirements.

Step 2: Frame a Trademark Assignment Agreement A Trademark Assignment agreement is a legal document, defining the terms of transfer. It should include –

• Name & complete address of the both assignor and assignee.
• Trademark details such as registration number, class, and description.
• Type of assignment (complete or partial, with or without goodwill).
• Consideration (or the financial terms of the transfer).
• Assignment’s effective date.
• Signatures of assignor and assignee.

Step 3: File an Application for Trademark Assignment To register the assignment, the assignee must apply with the Trademark Registrar.

• Form TM-P should be filed online from the IP India portal.
• The application should be submitted within six months from the agreement date.
• The specified government fee differs as per the number of trademarks assigned.

Step 4: Examination by the Trademark Registrar The Trademark Registrar will review the application to confirm whether –

• The assignment meets with the law.
• There is no violation of the public policy.
• The assignment should not create doubt in the market.

If needed, the Registrar may send the assignment to be advertised in the Trademark Journal.

Step 5: Publication in Trademark Journal If needed, the assignment details will be published in the Trademark Journal for knowing to the public. Any objections should be filed within four months after publication.

Step 6: Approval and Final Registration

• If there is no opposition received, or received objections are settled, then the Registrar updates the Trademark Register with the details of the new owner.
• The assignee gets the updated Trademark Registration Certificate which confirms the trademark ownership transfer.

What is Trademark Assignment?

A trademark assignment is the legal process of transferring trademark ownership rights from one individual or assignor to another individual or assignee. This transfer may be partial or complete, depending upon the deal between the parties.

Types of Trademark Assignments

• Complete Assignment: The first party or assignor hands over complete trademark rights to the other party or assignee, in which the rights to obtain royalties and additional transfer rights are included. The other party or assignee enjoys complete control over the trademark.
• Partial Assignment: The assignor hands over the trademark rights of particular products or services only and keeps rights for other products or services. This facilitates the assignor to continue utilizing the trademark in areas that are not provided to the assignee.
• Assignment with Goodwill: The assignee receives the trademark rights and their value, along with the prestige and client range.
• Assignment without Goodwill: The assignor prohibits the assignee from accessing the trademark focusing on the products the assignor uses earlier. The assignee is allowed to use the trademark for different products, ensuring no similarity with other products.

Legal Framework Governing Trademark Assignment in India

Can trademark ownership be transferred? Yes. In India, the trademark assignment is controlled by the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. These acts highlight the systematic process, its requirements, and the legal suggestions for transferring trademark ownership.

Required Documents for Trademark Assignment

• Original Trademark Registration Certificate – A copy of the original certificate indicating the trademark registration
• Assignment Agreement – a copy of the assignment agreement or deed, containing the effective date of the agreement, full name, address, and signature of both parties.
• Power of Attorney – a copy of power of attorney, indicating the signature of the authorized signer of the assignee.
• No Objection Certificate (NOC) – if needed, a copy of the NOC, indicating the transfer and trademark details and trademark is not involved in any legal disputes.

Legal Structure for Trademark Assignment in India

The transferring process of trademark ownership in India is governed by:

• The Trade Marks Act, 1999 – This act defines the rules and conditions for trademark assignment.
• The Indian Contract Act, 1872 – This act authorizes agreements between the first party or Assignor and the other party or Assignee
• The Trade Marks Rules, 2017 – This rule approves the official requirements for the trademark assignment

Under the Trade Marks Act, 1999, trademarks can be assigned with or without goodwill, as allowed under Sections 37 to 45, but they need to comply with regulatory requirements.

Important Legal Considerations

• The assignment needs to be in written form by a Trademark Assignment Agreement.
• It should clearly define the scope of rights being transferred.
• If the trademark is drafted without goodwill, a restriction should be clearly added.
• The assignment is required to be registered with the Trademark Registry to apply legally.

How to file Form TM-P for the Registration of Trademark Ownership Transfer?

The Trademark Ownership Transfer is an important process that should be implemented accurately and contains several essential steps. In the entire process, one crucial step is the submission of the TM-P form for the registration of a new Trademark Assignment.

At this point, the applicant is suggested to provide all relevant documents to support the trademark assignment process. These documents are significant in determining the authenticity and legality of the transfer.

Step 1: Making an Application The first step is to start with an application for the Trademark Assignment in Form TM-P. Either both the parties or the assignee and the assignor individually can move with the application process. It is required to provide correct and overall details of the transfer.

Step 2: Applying to the Registrar After filling and submitting the application with the necessary forms, the next step is to file the same application with the Registrar of the Trademark. The application should be filed within the assigned time which means within three months from the assignment date.

Step 3: Direction from the Registrar A trademark can be transferred with or without the transfer of goodwill. In case, the trademark assignment contains the transfer of goodwill, it is mandatory to obtain a direction from the Registrar. The direction from the Registrar is an official order, mostly issued before the expiry of three months from the date of applying.

Step 4: Advertisement Usually, the Registrar guides the applicant to advertise the trademark transfer before registering it. Hence, it is required to publish an advertisement in the given format as defined by the Registrar. The advertisement is used to notify the public about the amendment in ownership.

Step 5: Transfer of Ownership Having satisfaction with the essential documents, compliance with legal needs, and other important directions, the Registrar will officially transfer the trademark ownership from the assignor to the assignee.

Conclusion

Can trademark ownership be transferred in India? This is a common doubt that comes to mind for every business owner. Yes. This is possible and is a systematic transfer process that needs precise planning. If you are willing to transfer trademark ownership rights because of the selling of business, acquisition, or some personal reasons, proceeding with the right legal steps is essential. By adhering to the proper legal process, it ensures a hassle-free and compliant transfer of trademark rights.

By implementing the prescribed trademark transfer and satisfying the Indian trademark laws, a company is capable of protecting its product and brand image and also safeguards from the trademark infringement.

The transfer of trademark ownership is a vital aspect that should be executed well to avoid any complexities. Consulting with a trademark attorney or a legal professional can help you in the proper execution of the trademark transfer and avoid further difficulties.