Recording assignments and licenses of trademarks in India

Can a Trademark be transferred from one person to another?

Trademarks like any other asset can be transferred from one proprietor to another. The transfer could be temporary through licensing or permanent thorough an assignment. A registered mark, or a mark for which an application to register has been filed is assignable/transferable.

What is the difference between Assignment of Trademark and Licensing of Trademark?

In case of an assignment of a trademark, there is a transfer in the ownership of the trademark registration and in case of licensing, the proprietary rights of the trade mark continue to vest with the original owner but only few restricted rights to use the brand/trademark are given to the third party.

What is Assignment of Trademark?

Assignment of a trademarks is a process in which the owner of the trademark transfers the ownership and proprietary rights of the trademark either with or without the goodwill of the business. The manner in which an assignment can be made are as follows:

• Complete Assignment to another entity
• Assignment to another entity but with respect to only some of the goods/ services
• Assignment with goodwill
• Assignment without goodwill

What are the documents required for the Assignment of Trademark?

A trade mark is generally assigned by way of a properly executed and notarized Trademark Assignment Agreement which pertains to the transfer of the mark from the owner to another. Accordingly, a specific request along with the Trademark Assignment Agreement is required to effect such a change of ownership in respect of the mark at the Trademarks Registry.

What is Licensing of Trademark?

A trademark may be licensed to allow others to use the mark without assigning the ownership and the same may be done for all or some of the goods and services covered. The Trademarks Act refers to a Licensee as a ‘Registered User’.

Is it necessary to record an assignment with the Trademarks Office?

Once a trademark is assigned it is necessary to record the change in ownership with the Trademark Registry. Specific forms with fees along with the corresponding Assignment Deed have to filed to ensure that the records reflect the ownership details.

The Trademarks Act states that the assignment or transmission shall be ineffective against a person acquiring a conflicting interest in or under the registered trade mark without the knowledge of assignment or transmission.

Is it necessary to record a License Agreement with the Trademarks Office?

A trademark is licensed by way of a License Agreement. As per the Trade Mark Act, 1999, contrary to the requirement in case of Assignment, the recordal of the license agreement for permitted use with the Trademark Registrar of a trademark is voluntary and not compulsory. However, it is advisable that the Agreement be registered with the Registrar.