Trademarks are crucial for businesses to establish their brand identity and to differentiate their products and services from others. Trademark registration in India provides statutory protection to the owner of the mark by granting exclusive rights to use the mark. However, there are circumstances when the owner of the trademark wishes to transfer the ownership of the mark to another party. Trademark rights are valuable assets that businesses and individuals can use to protect their brand and reputation. In this article, we will discuss the steps involved in transferring trademark rights in India, including the different types of transfers, the requirements for each type, and the legal procedures involved.
Types of Transfer of Trademark Rights:
The transfer of trademark rights in India can be broadly classified into two types:
1. Assignment: The assignment is a complete transfer of ownership of the trademark from the owner to another party. The new owner becomes the absolute owner of the trademark, and the previous owner ceases to have any rights over the mark.
2. Licensing: Licensing is a temporary transfer of the rights to use the trademark to another party. The owner of the trademark retains the ownership of the mark, but the licensee has the right to use the mark for a specific period, under certain terms and conditions.
The process of transferring trademark rights in India:
The process of transferring trademark rights in India is governed by the Trade Marks Act, 1999, and the Trade Marks Rules, 2017. The transfer of trademark rights can be done through assignment or licensing.
1. Assignment of Trademark Rights:
The assignment of trademark rights in India is a complete transfer of ownership of the trademark from the owner to another party. The new owner becomes the absolute owner of the trademark, and the previous owner ceases to have any rights over the mark.
The process of assignment of trademark rights in India involves the following steps:
Step 1: Drafting of Assignment Deed:
The first step in the assignment of trademark rights is to draft an assignment deed. The assignment deed must be executed on a stamp paper of the appropriate value, depending on the state in which the deed is executed.
The assignment deed must contain the following details:
· Details of the assignor and assignee
· Details of the trademark being assigned
· Consideration for the assignment
· Date of transfer
· Rights and obligations of the parties
· Warranties and representations of the parties
· Signatures of the parties
Step 2: Filing of Assignment Deed:
The next step is to file the assignment deed with the Registrar of Trade Marks. The application for assignment must be made in the prescribed form (TM-P) and accompanied by the following documents:
· Original or certified copy of the assignment deed
· Evidence of payment of the prescribed fee
The Registrar will examine the application and the assignment deed and if satisfied, will record the assignment in the Register of Trade Marks.
Step 3: Publication of Assignment:
Once the assignment is recorded in the Register of Trade Marks, the Registrar will publish the assignment in the Trade Marks Journal. The purpose of publication is to provide notice to the public of the change in ownership of the trademark.
Step 4: Issuance of Certificate of Registration:
Upon the completion of the above steps, the Registrar will issue a certificate of registration to the assignee. The certificate of registration will reflect the change in ownership of the trademark.
2. Licensing of Trademark Rights:
Licensing of trademark rights in India is a temporary transfer of the rights to use the trademark to another party. The owner of the trademark retains the ownership of the mark, but the licensee has the right to use the mark for a specific period, under certain terms and conditions.
The process of licensing of trademark rights in India involves the following steps:
Step 1: Drafting of License Agreement:
The first step in the licensing of trademark rights is to draft a license agreement. The license agreement must be executed on a stamp paper of the appropriate value, depending on the state in which the agreement is executed
The license agreement must contain the following details:
· Details of the licensor and licensee
· Details of the trademark being licensed
· Consideration for the license
· Term of the license
· Scope of the license (i.e., the specific rights granted to the licensee)
· Restrictions on the use of the trademark
· Termination provisions
· Warranties and representations of the parties
· Signatures of the parties
Step 2: Filing of License Agreement:
The next step is to file the license agreement with the Registrar of Trade Marks. The application for the license must be made in the prescribed form (TM-L) and accompanied by the following documents:
· Original or certified copy of the license agreement
· Evidence of payment of the prescribed fee
The Registrar will examine the application and the license agreement and if satisfied, will record the license in the Register of Trade Marks.
Step 3: Publication of License:
Once the license is recorded in the Register of Trade Marks, the Registrar will publish the license in the Trade Marks Journal. The purpose of publication is to provide notice to the public of the licensee’s right to use the trademark.
Step 4: Renewal of License:
If the license agreement provides for a renewal of the license, the licensee may apply for a renewal of the license in the prescribed form (TM-R) along with the prescribed fee. The application must be made before the expiry of the license.
Transferring trademark rights in India is a straightforward process, provided the necessary steps are followed correctly. The owner of the trademark must carefully consider the type of transfer they wish to make – whether it is an assignment or a license – before proceeding with the transfer. The transfer of trademark rights through assignment or licensing can provide an opportunity for businesses to expand their reach and can be an effective way to monetize the value of their trademarks. It is important to note that the process of transferring trademark rights may vary depending on the specific circumstances of each case, and it is always advisable to consult with a legal professional to ensure that the transfer is done correctly and in compliance with the relevant laws and regulations.