Assignment or transmission of a trade mark refers to the process by which proprietorship of a registered trade mark/ trade mark whose registration is being sought, is passed from one party to another/ devolves upon the other party. The right of the registered proprietor to assign a trade mark for any consideration is recognized. A registered trade mark is assignable or transmissible with or without the goodwill in respect of all goods /services or some only of such goods/services for which the mark is registered. An important change introduced by the new Trade Marks Act 1999 law is that it enables an unregistered trade mark to be assigned or transmitted with or without the goodwill of the business.

Restrictions are imposed on assignment or transmission where multiple exclusive rights would be created in more than one person and also, to prevent splitting of right on territorial basis & creating right in different persons in different parts of India. However, the Registrar of Trade Marks is empowered to approve assignment where he is satisfied that it would not be contrary to the public interest. Where there is an assignment without goodwill of business, it will not take effect unless the assignor obtains directions of the Registrar of Trade Marks and advertises the Assignment as per directions.

Assignment of certification trade mark can only be done with the consent of the Registrar of Trade Marks. Where the assignment involves transmission of money outside India, permission of authority specified in any law for transmission of money abroad will have to be produced before the trademark assignment.

Registered proprietor of subsisting trademarks can assign his trademarks to subsequent users.

Application must contain full particulars of the instrument of title. In addition to the above, in respect of assignment of trademark(s) without goodwill, the application must state that:

• the trade mark had been or was used in the business in any of the subject goods or services, and
• the assignment was made otherwise than in connection with the goodwill of that business.

• 1

  Original or duly certified copy of the instrument of title. In case, the applicant does not establish his claim under any document or instrument he shall state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him.

• 2

  An affidavit in Form TM-18, if the Registrar so requires.

Any person who becomes entitled by assignment or transmission to a registered trademark should apply for registration of the assignment/transmission. An application to register the title of a person who becomes entitled to a registered trade mark by assignment or transmission shall be made in Form TM-24. The assignor & assignee can also make a joint request to register assignee as subsequent proprietor in form TM-23.

On application to register a subsequent proprietor in a case of assignment or transfer of a single trade mark: If made within six months from the date of acquisition of proprietorship – Rs. 5000/-, if made after expiration of six months but before 12 months from the date of acquisition of proprietorship – Rs. 7500/- and If made after 12 months from date of acquisition of proprietorship – Rs. 10,000/-

On application to register a subsequent proprietor of more than one trade mark registered in the same name, the devolution of title being the same in each case: If made within six months from the date of acquisition of proprietorship- For the first mark – Rs. 5000/- & For every additional mark – Rs. 1000/-. If made after the expiration of six months but before twelve months from the date of acquisition of proprietorship: For the first mark – Rs. 7500/- & for every additional mark – Rs. 1,500/-. If made after the expiration of twelve months from the date of acquisition of proprietorship: For the first mark – Rs. 10,000/- & for every additional mark – Rs. 2000/-.

Assignment of trademark(s) without goodwill shall not take effect unless the assignee, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, not exceeding three months in the aggregate, as the Registrar may allow, applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.

In case of an application for assignment of trademark(s) without goodwill, a copy of the directions of the Registrar to advertise the assignment and such proof, including copies of Advertisements or otherwise, as required by the office, to show that the directions have been fulfilled for in case the directions have not been fulfilled, the application will not be proceeded further.

The application for directions of the Registrar of Trade Marks shall be made in Form TM-20 and it shall state the date on which the assignment was made. A request for an extension of the period, within which the application for Registrar’s direction may be made, shall be made in Form TM-21. The application shall give particulars of the registration in the case of a registered trade mark, and in the case of an unregistered mark shall show the mark and give particulars including user of the unregistered trade mark that has been assigned therewith.

In case of dispute between the parties as to the validity of assignment/transmission of trademark(s), the Registrar may refuse to register the assignment/transmission until the rights of the parties have been determined by a competent Court.

We believe that Trade Mark Assignment/Transmission is one of the important part of every business. CompaniesHouse has been having combined experience in this domain for over 20 years now and has served several clients in India and abroad. Our team comprises of certified, professional trademark attorneys who provide the best services in the industry. Our trademark attorneys are updated with the changing market scenarios and are skilled to work on emerging tools and technologies. By outsourcing your requirements to us, you can save about 50% of your costs and concentrate more on your core competencies.

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Our clients have access to free support from an expert team. We are always on standby to help. If you need assistance at any point before, during, and after the registration of your company, you will be able to reach us by telephone or email.

If you have any kind of Trade Mark registration, renewal and assignment/transmission related requirements, feel free to write to us or talk to one of our representatives and we will get back to you within 24 hours.