Assignment of trademark refers to the power of the proprietor of a trademark to transfer the trademark to another person for consideration. Both registered and unregistered trademarks can be the subject of an assignment. It is important to keep in mind that when such an assignment takes place, the person transferring the trademark should present effectual receipts for any consideration of such assignment.

Similar or identical trademarks cannot be assigned to vest exclusive rights in more than one person if such trademarks are in relation to the same goods and services or same description of goods and services. If such an assignment is made, it is invalid. The proprietor of a registered trademark who proposes to assign such a trademark has to submit to the Registrar a statement of case, setting out the circumstances of the assignment. The Registrar, having regard to the similarity of goods and services, will issue a certificate stating whether such an assignment is valid or not. If the Registrar grants a Certificate validly accepting the assignment, an application for registration of the title to the trademark should be made by the assignee within six months from the date of the issue of the certificate.

Let us consider the example of a proprietor of the mark ‘SLURPZZ’ who is engaged in the business of selling sweets. If the proprietor intends to assign the trademark to ‘A’ to sell sweets and thereafter to ‘B’ to sell sweets and savories, the proprietor will have to obtain a certificate from the Registrar permitting the assignment of the mark over the same goods to two separate entities.

Assignment of a trademark can be made with or without goodwill. An assignment for trademark is made with goodwill when the assignor transfers the rights and value of the trademark and allows the assignee to use it for the products associated with it.

For example, if ‘P’, the owner of the trademark ‘NEEW’ dealing in footwear assigns it to ‘Q’ and also lets ‘Q’ use it for selling footwear then such a trademark is assigned with goodwill.

An assignment for trademark is made without goodwill when the assignor assigns the trademark to the assignee only with regards to dissimilar products. The assignee can only use the trademark for dissimilar products and is restricted from using it for the same products as used by the assignor. For example, if ‘P’, the owner of the trademark ‘NEEW’ dealing in footwear, assigns it to ‘Q’ where ‘Q’ can use it for any product except footwear then that is an assignment without goodwill.

When an assignment of a trademark takes place other than in connection with the goodwill of a business, the assignment shall not be effective unless the assignee applies to the Registrar for directions with respect to the advertisement of assignment within a period of six months. This time of six months can be extended for another period of three months if necessary. The assignee shall then make the advertisement as directed by the Registrar.

When a person becomes entitled to a trademark by assignment, he shall apply to the Registrar to register his title and the Registrar shall, on receipt of such application, register him as the proprietor of that trademark. The Registrar can ask the assignee for evidence for proof of title or any further evidence when there is reasonable doubt about veracity of any statement. The Registrar can also refuse to register an assignment until the rights of parties have been settled by a competent Court, where validity of an assignment is in dispute between the parties.

Cost for assignment of Trademark

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