Assignment of Trademark

Trademark Assignment is the process when the ownership of a trademark is transferred from one party to another whether along with or without the goodwill of the business.
Trademark assignment usually takes place through the execution of the agreement between the parties, which is known as the Trademark Assignment Agreement. Assignment agreement will be considered as legally valid when it shows intention on the part of the assignor to transfer complete or partial ownership of the mark.

Types of Trademark Assignment:

Complete Assignment: In this type, complete rights in relation to a registered trademark are transferred to the second party. The owner here transfers all the rights with respect to marking to the other party, which includes rights of further transfer, to earn royalties, etc.

Partial Assignment: In this type of assignment, transfer of ownership is limited to certain services/products as parties have decided or expressed in the trademark assignment agreement.

Assignment with goodwill: In such type of assignment value and right, both the things associated with the trademark are transferred to the third entity with goodwill.

The assignment without goodwill: This type of assignment also known as gross assignment. Here, the owner of the brand restricts the right of the buyer. The buyer cannot use such a brand for the product being used by the original owner. Hence, the goodwill attached to such a brand with respect to the product already being sold under such a brand is not transferred to the buyer.

Benefits of a trademark assignment

Unlock Hidden Value: With the help of the assignment, the owner of the brand can unlock the value of the brand which was at this point only had value on papers. The assignee on another hand could be significantly better off entering a market with an already known brand, rather than creating a new one again.

Legally Valid Proof: In case of any dispute relating to the trademark, legal rights can easily be established only through the deed of assignment. The Registrar of Trademark ensures that all the checks are in place by examining the validity of all the conditions which are mentioned in the agreement.

Requirements for Trademark Assignment:

• Assets to be assigned
• pending trademark applications.
• Issued trademark registrations.
• Goodwill.
• Associated marks, applications, or registrations.
• International registrations.
• Common law trademarks.
• Names of living or deceased individuals.
• Domain names, email accounts, social media or website accounts, etc.

Execution requirements
• Signatories.
• Witness.
• Notarization.
• Legalization.
• Execution date and place.
• Power of attorney.

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