Jai Narayan Vyas University

Jodhpur
Faculty of law

SESSION = 2021-22
SUBJECT = LAW RELETED TO INTELECTUAL
PROPERTY RIGHTS
TOPIC = TRANSFER AND TRANSMISSION OF
TRADEMARKS

SUBMITTED BY: SUBMITTED TO:

DINESH CHOUDHARY MR EKLAVAY BHANSHALI SIR

BA LLB 8TH SEM

 ACKNOWLDGMENT
I have taken lots of efforts in this assignment. However it
would not have been possible without the kind support of Mr
Eklavay Bhanshali sir. I would like to express my sincere
thanks to her.
I m highly indebted to jai Narayan vyas university for this
guidance and constant supervision as well as for providing
necessary information regarding this assignment.
I would like to express my gratitude towards my family and
friends for their kind cooperation and encouragement which
helped me in completing my assingnment.
My thanks also goes to those people who directly or indirectly
helped me in completing my project report.
Table of Contents
1 Introduction

2 What are trademarks

3 Nature of trademarks

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

5 Various ways in which assignment agreements can be executed

6Limitations of trademark assignment under the 1999 Act

7 Parameters to consider in drafting of an effective assignment agreement

8 Documents required to be attached with trademark assignment agreements

9 Assignment where transmission of money is taking place outside India

10 Discretion of the registrar

11 Registrar’s certificate or approval

12 Fees for assignment of trademarks in India

13 Conclusion
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 TRADMARKS

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.

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 ASSIGNMENT AND TRANSMISSION OF THE

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 AGREEMENT 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.

LIMITATION OF TRADMARK 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.
DOCUMENT REQURED TO BE ATTACHE WITH TRADEMARK

ASSIGNMENT AGREEMENT

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
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.

DISCRITION 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.

RAGISTRAR’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 TRADEMARK 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.