How to Transfer Trademark Ownership in India

Registering a trademark is only the first step in the journey of protecting your brand identity. Moreover, after obtaining registration, it is a bit difficult to maintain a mark for a long period. Hence, leading to the need for transferring ownership rights of trademarks. In this blog, we solve the ever famous question of ‘How to transfer trademark ownership’. But first, we will see what exactly the term transfer of ownership of a trademark means and how to assign a trademark. Moreover, in this blog we will also see how to transfer the ownership of a trademark in India, specifically. 

Understanding the concept of transfer of ownership of a Trademark?

The transfer of ownership of a trademark can either be temporary, partial or permanent. When you decide to learn how to transfer trademark ownership, you go through the process of trademark assignment. This transfer of ownership of a trademark can happen through a deed of assignment or licensing agreement between the parties. 

Also Read: What is Trademark Objection Reply in India

Types of Trademark Ownership Transfer

Two broad categories of transfer of ownership of a trademark are available. Let’s see them in detail: 

Trademark Assignment

An assignment involved the transfer of the ownership of a trademark from one party to another. This process takes place on the IPindia portal online. In the assignment of a trademark, you can either transfer your ownership of the trademark with the goodwill or without it. 

Trademark Licensing

Licensing happens when the owner of a trademark licenses part of its trademark ownership rights to an authorized third party. Usually, all transfers of trademark ownership through licensing happen in accordance with a trademark licensing agreement. In this process, the transfer is only for a certain specific time period. 

Also Read: Importance of Trademark Registration in India 

Reasons to assign ownership of trademark in India

Once you undergo the trademark registration process, it is usually to avail the benefits of owning a trademark. However, there can be many different scenarios under which the owner may have to assign a trademark right to another party. The situations below are some of the reasons leading to transfer of ownership of trademark:

The Death of Trademark Owner

Whenever the owner of the trademark dies, its ownership moves on to the successors in will or intestate. The condition is that the trademark should be valid. Hence, it should not have the “abandonment status”. The term ‘abandoned’ here is the status of a trademark application. This particular status means that the trademark has lost its protection.

Sale of Business

Intellectual properties are assets. Just like all properties, even the trademark you can sell a trademark with the company. As long as you register it under the company’s name. Hence, if a third party acquires a company, they can also see how to assign a trademark rights through this blog. 

Change of Name of Owner

When there is a merger or an amalgamation of the company, the owners transfer all the trademarks in the name of the company to the new business and send its notification to the Trademark Registry to effect the same. All the intellectual property of the acquired company belongs to the new company through the trademark assignment agreement. 

Also Read: Documents Required for Trademark Registration in India

Change in Form of Business

An assignment is a boon for businesses that plan on changing their business structures. For example, a sole proprietorship that ownls a trademark can later transfer the ownership and rights,  through trademark assignment in case it plans on changing its business structure i.e. convert the sole proprietorship to a private limited company.  

Business Expansion

One common way of how you can transfer ownership of a trademark is through a licensing agreement for the purpose of entering business collaboration deals. This is getting more popular as it allows various businesses to tap into unknown market potentials. 

Other Types of trademark assignment

• Complete Assignment –includes a complete transfer of all the rights.
• Partial Assignment – When the transfer of rights happen for a specific set of products and services only. 
• Assignment with goodwill  – when you transfer goodwill, you also transfer the value a brand has made in the market.
• An assignment without goodwill – The assignor can restrict the assignee’s rights for the product already used by him. This means that the assignor & assignee both can use the same trademark but for different goods and/ or services.

You can read more about rights transfer when you decide to sell a trademark in India. 

How to Transfer Trademark Ownership? 

The process of transferring the ownership of a trademark in India involves the following steps: 

Draft Assignment Deed

The first step in how to transfer ownership of a trademark is to draft a written assignment deed between the assignor and assignee. Moreover, this agreement for transfer of ownership must also cover all specific relevant details of the assignment.

Record to the Registry

Changes in the ownership of a trademark need to be addressed to the trademarks registry. This requires the parties of trademark assignment to submit the relevant form to the trademarks registry. The registry will then undergo all the submissions and update the records accordingly. 

Notification

Once the parties decide to transfer the ownership of a trademark, they will have to notify all the stakeholders, vendors, etc of such assignment or transfer. This helps in eradicating chances of future disputes between parties. 

Update Records

After the registry approves to assign a trademark, the parties to the assignment will have to update all its records and books. Moreover, it also needs to ensure to keep a copy of the assignment deed and the order of the trademark registry in handy. 

Maintenance

Once the trademark is successfully assigned and all the details are updated, it becomes the new trademark owners duty to maintain the trademark. Moreover, it is also their responsibility to maintain the usage of the trademark. 

Documents Required for Transfer of Ownership of a Trademark

You will need the following:

Trademark Assignment Deed

The most important piece of document to prove the transfer of ownership in trademarks in the assignment deed. If you are going through the route of licensing, the assignment deed will be replaced by the trademark licensing agreement. 

Power of Attorney

When you hire an attorney in India to facilitate the transfer of trademark ownership process, you will have to authorize the attorney to act on your behalf. You can do this easily through the power of attorney. 

No Objection Certificate

The transferor needs to issue an NOC, stating that they are intending to transfer all their rights. 

Identification Documents

Both the parties, the assignor and assignee mandatorily need to submit their identification documents including aadhaar or PAN details, to prove their residence, age, nationality, etc. 

Benefits of choosing to assign a trademark

• Monetize the value of your trademark and enjoy the fruits of the time and investments done for creating the brand. 
• Helps in business expansion and in keeping the brand alive.
• The assignee also benefits as he/she would not have to work on building a brand and creating a brand reputation all over again.
• Trademark assignment is valid proof and has legal standing in the court of law as it secures the rights of the assignor and the assignee. 

In case one fails to intimate the change of trademark ownership in time, it can lead to building preconceived notions and confusion among consumers. This may harm the reputation of a trademark or possible loss of rights as the trademark would fail to show the true origin of the product.

The new owner will not be able to claim his/her rights by filing a suit of infringement, or opposition or make renewals, if the trademark assignment is not recorded in time or if it has been recorded erroneously.

The failure or delay in recording trademark assignment in India may result in a possible loss of royalties and other trademark-related income and gains.

Conclusion

To conclude, the process of transferring the ownership of a trademark can be easily completed once both the parties agree and learn how to transfer or assign a trademark. Moreover, this is a step that is followed after trademark registration is obtained online. It helps in expanding the brand and securing protection over a variety of goods and services. Feel free to connect with LegalWiz.in experts to transfer the ownership rights to a trademark.