Documents Required for Trademark Assignment In India

Trademark assignment is the transfer of the trademark owner’s right in a trademark to another individual or business entity. It is an important step and it helps in instant monetary benefits along with the reduced cost of maintenance of trademark portfolio/s. The process of trademark assignment requires the assignor and assignee to execute and submit many documents. The documentation for trademark assignment may get confusing for a layman. Considering collection and submission of documents a hassle for you, we are here with a brief guide on the documents required for doing trademark assignment in India.  

Documents Required for Trademark Assignment in India

Only a registered owner can transfer the rights of a trademark. Trademark rights can be transferred either before the trademark is registered or once the trademark is successfully registered. It must be noted that the document requirements remain the same in both cases.  For transfer of rights before registration, you should file a request for trademark rights transfer through Form TM – M.  For trademark assignment after a successful trademark registration, Form TM – P (the form used to file a request for trademark assignment) is to be filed along with the prescribed fee. It is always advisable to seek professional assistance while going for trademark assignment in India.

Below is the list of documents required for the process of trademark rights transfer –

1. Power of Authority (from Assignor & Assignee)

Two parties are involved in this process. The assignor is the party who assigns the rights (in part or whole) to another party. The assignee is the one who receives the trademark rights in the process of trademark assignment. 

If the trademark assignment is done with the help of a legal professional then each party is required to execute a power of authority. In the present context, the power of authority is a document that grants a right to legal professionals to carry out representations and pursue legal procedures related to trademark assignment for any individual or business. 

2. Trademark Assignment Agreement

 In the process of trademark sale, parties are required to execute a written agreement to make such trademark assignment enforceable. The trademark assignment agreement is a document which is also an acknowledgement of the transfer of rights and responsibilities from one person to another. 

This is the only document that clearly shows –

• The change of ownership of a trademark.
  
• The interest of the parties involved.
  
• The rights and obligations associated with the trademark assignment, consideration to the assignor for such transfer etc.

The assignment agreement is enforceable in India if the parties duly execute it with appropriate stamp duties, notary and signature of the parties.  The parties can keep a copy of the trademark assignment agreement. The originals are to be submitted to the appropriate trademark registry to give effect to the change of title of the trademark.

A trademark Assignment agreement comprises various entitlements, rights and responsibilities of various parties. It also anticipates the expectations and risks of the parties involved. It is advisable to consider a professional’s view before performing a trademark assignment in India.

3. No Objection Certificate (executed by the Assignor)

A no-objection certificate encapsulates the assignor’s wish to transfer the trademark ownership. In this document, the trademark assignor also agrees that they have no objection to such a transfer of right.

4. Goodwill Certificate (given by the Assignor)

This document is required when the trademark is being transferred wholly along with the trademark owner’s goodwill. 

Basically, a goodwill certificate provides that, the assignor has a right to all entitlements related to the qualitative value in a trademark and the assignor is transferring his/ her rights in a trademark to another person. Generally, this document allows the assignee to acquire all entitlements and values associated with the trademark and a right to unconditionally use the trademark for any of the goods and services.

One of the benefits of a goodwill certificate is that it allows the assignee to use the trademark for any type of goods and services, whereas, a trademark assigned without a goodwill certificate can be used for a specific set of goods and services only. Here, a ‘specific set of goods and services only’ means that it covers only those categories of goods and services in which the assignor has traded before.

5. Acceptance of trademark rights (provided by the Assignee)

This is another important document which should be submitted to the trademark registry during the process of trademark assignment. The trademark rights can be transferred by the assignor and the assignee needs to accept the same as well.  

Therefore, this document consists of the written acceptance of the assignee for the right transfer. Sometimes, this document is also merged with the trademark assignment agreement. It highlights the acceptance of trademark rights by the assignee.

This was the list of commonly used documents for the transfer of a trademark.  The trademark assignment process is a complex one, therefore you should always seek an expert’s advice for trademark assignment or trademark registration related service/s. Know more about the transfer of trademark rights through trademark assignment.