This article is written by Pradhnya Deshmukh, pursuing a Certificate Course in Trademark Licensing, Prosecution and Litigation from LawSikho.

Introduction

Trademarks are intellectual property which initially gained popularity during the industrialization era of human development. With manufacturing processes getting more efficient with each technological and scientific research and innovation, competition in the market became stiff. Traders and manufacturers began to use unique symbols and words to identify and differentiate their goods from that of other similar goods being sold in the market. It is a misconceived notion that trademarks, per se, is a new legal concept. In the 19th Century, bakers found an unexpected blank canvas in the plain and taught round bread doughs. The bakers started using unique scoring techniques to distinguish their bread loafs from that of other bakers. The French scientist Vaudry appreciated the “breads with cuts on their surface” as an artistic creation backed by science causing an improvement in the appearance of the bread. 

This article discusses assignment of trademarks in India with respect to the ways in which this can be done, its limitations, documents required for assignment agreement registration, fees and costs, and registrar’s discretion.

What are trademarks

Trademarks are artistic symbols, words, phrases or combination thereof, used to identify and distinguish certain goods or source of services from that of other similar goods or services available in the open market.

In India, trademarks are governed under the Trade Marks Act, 1999 (“the Act”) and are defined under Section 2 (zb) thereof.

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Nature of trademarks

Trademarks are assets or property with its nature similar to that of other physical properties such as land or house. It is pertinent to note that under the 1999 Act trademarks owners do not have to mandatorily register their marks to be considered the rightful proprietors of their trademarks and even unregistered trademarks can be assigned or transmitted. A trademark or brand owner has the rights to sell, license, assign and transmit its asset and its rights with respect to the said asset.

What is the ‘assignment’ and ‘transmission’ of Trademarks

Assignment of trademarks takes place when there is a transfer of ‘ownership’ of the mark from one party to another with or without goodwill of the business. In India, in case of assignment of registered trademark, such assignment is required to be recorded in the register by filing Form TM-P (Application for Post registration changes in the trademarks). (Form available here http://www.ipindia.nic.in/FORM-TM-P.pdf) along with the prescribed fees. In case of unregistered trademark, all assignments must be registered on Form 23 (Form available here http://www.ipindia.nic.in/TM-23.pdf)   or Form 24 (Form available here http://www.ipindia.nic.in/tm-24.pdf)  before the Registrar of Trademarks.

Assignment of trademarks is conducted by way of a properly executed Trademark Assignment Agreement signifying the transfer of the mark from one person or entity (owner) to another party. 

Transfer of rights by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, not being assignment, is also as transmission of trademarks under Section 2 (1) (zc) of the Act.

Provisions of Section(s) 37 to 45 under Chapter V of the Act postulate the form and procedure of assignment and transmission of trademarks in India.

Various ways in which assignment agreements can be executed

1. Complete Assignment – All rights in the trademark as transferred to another entity including the rights to earn royalties etc.
2. Assignment with respect to specific products or services also known as Partial Assignment – The transfer of ownership is restricted to the type of goods or services agreed upon by the parties.
3. Assignment with goodwill – All rights and value of the trademark as associated with the goods or the services are transferred. Herein, the assignment is such that the rights and value are transferred not only with respect to the class of goods the trademark was previously benign used for. The party receiving the ownership of such trademark is free to use the such trademark for any class of goods. (under Section 39 of the Act).
4. Assignment without goodwill also known as gross assignment – All rights and value of trademark are transferred to the assignee (buyer) without the transfer of right to use such trademark for the class of goods it was previously being used for by the original owner of the trademark. For e.g., Where the trademark “LOVEKART” was being used for gift box delivery services, any assignment without goodwill of the same would not allow the assignee to use such trademark “LOVEKART” for gift box delivery services. The assignee may use with respect to any other class of goods or services and has to create a separate goodwill in the same. (under Section 39 of the Act).

Unregistered trademarks assigned without goodwill restrict the assignee’s right to protect the trademark against passing off actions. Unless, there is a registration of the trademark, no enforceable rights shall be within the scope of the assignee.

Limitations of trademark assignment under the 1999 Act

1. Creation of exclusive rights in more than one person with respect to same or similar goods or services including allied and cognate class of goods and services is restricted since it would create confusion in the minds of the general public with average memory.
2. Assignment to different people to use the marks in different parts of the country is also restricted.
3. Assignment to different people using the mark in different parts of the country together is also restricted.

Parameters to consider in drafting of an effective assignment agreement

1. The Assignment and the obligations mentioned therein must not detrimentally affect the rights of the owner.
2. Whether the assignment is with or without goodwill must be expressly mentioned.
3. The drafting of the said agreement must show a clear purpose of the transaction and the clauses of the said agreement must be in flow of the said purpose.
4. The geographical scope of locations where the rights and value in the trademark would be possessed by the assignee must be expressly mentioned.
5. Whether the trade dress (if any) is also being transferred along with the trademark must be expressly mentioned.
6. If the trademark being assigned includes the name of any person, living or deceased, a written consent from such person (or their representative) must be procured.
7. The transfer of right to sue and collect damages for past and future infringements must be mentioned.
8. Mandatory requirements as to form and content:
   1. The Agreement must be in writing. Oral transmission is not recognised in India.
   2. The Agreement must clearly identify the parties involved i.e., the owner (assignor) and the buyer (assignee).
   3. There must be a clear indication of the nature and value of the consideration for which the ownership is being transferred for.
   4. The date and day of assignment to be mentioned clearly is of utmost importance in order to prevent any complications in case disputes concerning the same arise in future.
   5. Relevant application or registrations being transferred must be clearly mentioned rather than merely stating agreement for transfer of trademarks in ownership of the assignor.
   6. Agreement must be duly executed i.e., it must be notarized, stamped as per the applicable Stamp Act, stamp duty.
   7. Signatures and Witnesses along with the date and place of execution must be clearly provided.
9. Miscellaneous provisions
   1. Whether or not the said agreement would be binding on the legal heirs shall be duly mentioned.
   2. Any provision for co-operation and assistance to assignee by the assignor in enforcing, recording or taking any legal action in the near future must be duly mentioned to be agreed upon. Moreover, the party who shall bear the expenses must also be duly specified.

Documents required to be attached with trademark assignment agreements

1. Certificate of Trademark Registration or pending applications including, domain names. (Where the domain name is not registered as a trademark, a copy of invoice indicating proof of ownership of the trademark may be attached)
2. Acknowledgement slip from the assignor for receipt of consideration from the assignee for trademark assignment which is duly signed, stamped and notarized.
3. No Objection Certificate from the assignor which is duly stamped and notarized.
4. No Objection Certificate from the assignee which is duly stamped and notarized.
5. Where either one of the parties involved is a Company, a Board Resolution on Company’s letter head approving the assignment agreement and authorizing any representative to deal with the said trademark assignment which is duly stamped and notarized.
6. Where the trademark is registered, Form TM-P must be filed along with the governmental fees of Rs 9,000 for each trademark, if filed online or Rs 10,000 if filed offline.
7. Where the trademark is registered, a Power of Attorney to authorize the Trademark Agent/Attorney to file the subsequent proprietor by way of assignment must be filed along with governmental fees of Rs 900 for each trademark if filed online or Rs 1000 for each trademark if filed offline.
8. Where the trademark is pending registration, Form TM-M (Form available here http://www.ipindia.nic.in/FORM-TM-M.pdf) for correction of clerical error or for any miscellaneous function under Rule 37 of the Trade Marks Rules, 2000 must be filed along with governmental fees of Rs 900 of each pending trademark if filed online or Rs 1000 for each trademark if filed offline.
9. Where the trademark is pending registration, Power of Attorney in Form TM-M to authorize a Trademark Agent/Attorney representing the assignee must be filed. This document may be required where the assignee already has a Trademark Agent/Attorney.

Assignment where transmission of money is taking place outside India

Where there is any law in force regulating the transfer of money outside India, the Registrar of Trademarks shall not register the title of the assignee except on production of the permission or consent of the authority specified under the applicable law in force for such transmission.

Discretion of the registrar

The trademark Registrar may ask for production of an Affidavit on Form TM-18 (Form available here http://www.ipindia.nic.in/form-TM-18.pdf) for the verification of title along with the proof of title for his satisfaction.

Registrar’s certificate or approval

Under Section 40 (2) of the Act any person desiring registrar’s approval certificate must make an application under Form TM-P and attach align with it the statement of case (background facts) and copy of any instrument/proposed instrument affecting the assignment. The registrar may ask to furnish proof of title or any further evidence thereof. In cases where the statement of case is amended, three copies of the same in its final form must be filed with the registry.

Fees for assignment of trademarks in India

1. Where the trademark assignment is done within six months from the date of acquisition of proprietorship then statutory fee would be Rs 5,000.
2. Where the trademark assignment is done after the expiry of six months but before twelve months from the date of acquisition of proprietorship then the statutory fee would be Rs 7,500.
3. Where the trademark assignment is done after twelve months from the date of acquisition of proprietorship then the statutory fee would be Rs 10,000.

Conclusion

Trademark Assignment Agreements facilitate innovation and gain benefits of such future creations and is essentially a subset of Technology Transfer Agreements which essentially covers all assignment agreements related to the Intellectual Properties.

Often the assignee attempts to ride upon the rights of the owner by demanding same or similar rights to that of the assignor. This is where precise and sound drafting of the trademark assignment agreement becomes essential and demands assignment as per intention of the parties.

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