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Published by Enhelion, 2021-01-01 00:48:29

Module 8

Module 8

MODULE 8
ASSIGNMENT & TRANSMISSION

Section 2(1)(b) of the Trademarks Act, 1999 describes assignment. It is a process in
which the owner of a trademark transfers the ownership of the mark either with or
without goodwill of the business. Transfer which is permanent in nature is called
assignment.

8.1 TYPES OF ASSIGNMENT
1. Complete Assignment: The owner of the trademark transfers all the rights with
respect to the trademark. These include the right to further transfer, earn royalties etc.
2. Partial Assignment: In this kind of assignment, the ownership of a specific
product or service is transferred. The owner may retain the right to further transfer or
to earn royalty.
3. Assignment with Goodwill: The owner transfers the right as well as the value
of the trademark associated with the product.
4. Assignment without Goodwill: Under such assignment, the owner can restrict
the assignee to use the trademark for the products that he uses it for.1 The goodwill
attached to the owner’s brand with respect to the product already being sold under such
brand is not transferred to the buyer. The assignor and assignee can both use the same
trademark but for dissimilar goods or services.

8.1.1 Procedure for Assignment
Section 45 of the Trademarks Act 1999, defines the procedure for registration of
assignments.
The procedure for the assignment of an unregistered trademark is as under:
● An application to the registrar has to be made jointly by the assignor and the

assignee.

1 ‘Assignment of Trademarks in India’ Selvam & Selvam (September 2014)
<https://selvams.com/blog/assignment-of-trademarks-in-india/>

● The assignment agreement should be in written form and must mention all the
necessary clauses.

● Evidence necessary to furnish the agreement must be provided jointly by both the
parties.

● TM-M form is filed for recording the assignment of a pending mark and TM-P form
is filed for recording of assignment of a registered mark.

● The Registrar may accept or deny the assignment agreement based on the
requirements and clauses of assignment agreement.

The assignment procedure for a registered trademark is the same as the unregistered
trademark except for the points mentioned below:

● Form TM-P has to be filed.
● The procedural requirements for assignment and transmission have been given in

Chapter V.
● Rules 75 to 85 of the Trade Marks Rules, 20172 govern the assignment.

8.1.2 Assignment Agreement

The assignment agreement must be drafted keeping in mind the following:

● It must be in writing. The assignor’s name (i.e. the owner of the trademark) must
be the same as in the Register of Trademarks.

● The territorial extent of the assignment must be clearly laid down.
● The consideration that the assignee needs to pay should be mentioned and the stamp

duty has to be calculated on the basis of the consideration.
● The effective date of assignment must be stated clearly.
● One of the most important clauses is to clearly state the mark/marks that the

assignor wants to assign. Any ambiguity in this provision may lead to disputes.
● The agreement must mention whether that assignment is with or without the

goodwill.
● The agreement should be drafted keeping in mind the purpose of the transaction in

question.

2 Available at
<http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_312_1_TRADE_MARKS_RULES_
2017__English.pdf>

It is important to ensure that the transfer of right takes place through the operation of
law. The assignment should not create multiple exclusive rights.

8.1.3 Difference between Agreement & Licensing

Assignment Licensing

● It means selling the complete ● It means renting of the trademark.
ownership.

● It must be in writing. ● It is not required to be in writing.

● Assignment can be made wholly or ● License is giving the rights for a

partially. specific period of time.

● Assignment is not time sensitive, once ● License is only for a limited time

assigned, the ownership is gone. period.

8.1.4 Forms
The various important forms for recordal of assignment are as follows:

1. Form TM-M for pending marks:3

On what payable Amount for Amount for E-
physical filing filing
On application for: Extension of time,
or Certified copy, or Duplicate Rs. 1,000 Rs. 900
Registration Certificate, or inspection
of document ,or Particulars of
advertisement to registrar, or seeking
grounds of decision of Registrar, or
Enter in the register and advertise a
note of certificate of validity under
rule 127, Amendment in trademark

3 First Schedule, Trade Mark Rules, 2017. Available at <http://www.ipindia.nic.in/form-and-fees-
tm.htm>

application, or Particulars of Rs. 2,000 Rs. 1,800
advertisement of a trademark to
Registrar under rule 41.

On application for: Deposition of
regulation of collective trademark
under section 66 or alteration of
regulation of certification trademark
under section 74 (2), or Seeking
Registrar preliminary advice, or For
division of an application.

On application for: Review of Rs. 3,000 Rs.2,700
Registrar’s decision, or Petition (not
otherwise charged) for obtaining Rs. 5,000 Rs.4,500
Registrar’s order for any interlocutory
matter in a contesting proceeding, or Not allowed Rs. 20,000
Any other matters not covered in other Not allowed Rs. 40,000
TM forms. Not allowed Rs. 1,00,000

On request for an expedited certificate
of the Registrar (other than a
certificate under section 23(2) of the
Act) or certified copies of the
documents under proviso to rule 122
(Note: for entry in respect of each
registered trademark or for each
document)

On application under rule 34 for
expedited process of an application
for the registration of a trademark:

Where the applicant is an Individual /
Startup/Small Enterprise

In all other cases (Note: fee is for each
class and for each mark)

Request to include a trademark in the
list of well- known trademark (Note:
applicable fee is for one mark only.)

2. TM-P for registered marks:4

On what payable Amount for Amount for E-
physical filing filing
On application under section 45 to register a
subsequent proprietor in case of assignment Rs. 10,000 Rs. 9,000
or transfer for each trademark

On application for: Certificate of the Rs. 3,000 Rs. 2,700
Registrar under section 40(2), or For Rs. 2,000 Rs. 1,800
approval of the Registrar under section 41, or Rs. 1,000 Rs. 900
Direction of the Registrar for advertisement
of Assignment without goodwill under
section 42, or Add or alter a registered
trademark under section 59(1) for each
trademark, or Conversion of specification
under Section 60 for each trademark.

On application for: Extension of time for
applying for direction under section 42 for
advertisement of assignment without
goodwill, or Extension of time for
registering a company as subsequent
proprietor of trademarks under section
46(4),or Consent of Registrar to the
assignment or transmission of a certification
trademark under section 43, or Change a
name and / or description of a registered
proprietor or a registered user of a trademark
under section 58 for each trademark.

On application for: Dissolution of
association between trademark sunder
section 16(5), or Change in address or
address for service in India of Registered
Proprietors under section 58 for each
trademark, or Request for cancellation of an
entry in the register or part thereof under
section 58 for each trademark.

4 ibid.


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