Documents Required for Trademark Assignment In India

Published On: Jul 19, 2022Last Updated: Aug 4, 20223.8 min read

Overview

An entrepreneur’s capacity to acquire and sell assets is essential for its longevity. Intellectual property is an intangible asset and does not take up any physical space. However, it requires a continuous investment to maintain and manage a large number of intellectual property assets such as trademark portfolios of different types of entities. In the case of trademarks, companies generally sell the ones which do not contribute to any revenue generation. In this blog, we will discuss the documents required for trademark assignment in India. Trademark assignment helps in maintaining healthy asset-related investments. 

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. Know more about the transfer of trademark rights through trademark assignment.

Documents required for trademark assignment in India

A trademark rights transfer can only be done by the registered proprietor of the trademark. The document requirements remain the same if it is done before trademark registration or post trademark registration. If you are pursuing the process of transfer of rights before its registration, you should file Form TM – M. However, if the assignment is to be done after a successful trademark registration then Form TM – P (form used to file a request for trademark assignment) is to be filed at the Trademark Registry. It is always advisable to seek professional assistance while going for trademark assignment in India.

Below is the list of document requirements for doing 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 its partial or entire rights in a trademark to another party. The assignee is the recipient of 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

As a part of the sale of trademark/s, the parties are required to execute a written agreement to make such trademark assignment enforceable. The trademark assignment agreement is a document that consists of an acknowledged transfer of rights and responsibilities from one person to another. This is the most essential document as it is the only document that clearly shows the change of title of a trademark, the interest of parties involved, the rights and obligations associated with such trademark assignment, consideration to the assignor for such transfer etc. 

The assignment agreement is enforceable in India if the parties duly execute it with applicable stamp duties, notary and signature of the parties. The parties keep the originals of the trademark assignment agreement and another copy is submitted to the trademark registry for giving effect to such change of title in the records of the trademark registry. 

3. No Objection Certificate (executed by the Assignor)

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

4. Goodwill Certificate (given by the Assignor)

This document is only required when the trademark is being transferred wholly along with its goodwill. Generally, this document allows the assignee to acquire all entitlements and values associated with the trademark along with a right to use the trademark for any of the goods and services unconditionally. 

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 are transferred by an assignor but 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. The importance lies in the acceptance of trademark rights by the assignee and the same should be expressly mentioned in the trademark assignment-related documents.

Above is the list of commonly used documents for the transfer of title in a trademark from one person to another. Processes related to trademarks are complex therefore you should always seek expert advice for trademark registration or trademark assignment service/s. 

Share This Post:

Rohan Sharma
About the Author

Rohan Sharma

Rohan Sharma is a lawyer with a flair for writing. Rohan has a special interest in the domain of Intellectual Property Rights and possesses an extensive experience in the fields of trademarks, copyrights and industrial designs. Aiming to understand the intricacies of law as a concept and its symbiosis with advancing technology and changing societies, the author seeks to examine the nuances of law.

Leave A Comment