Assignment or transmission of a trademark refers to the process by which ownership of a registered or pending trademark is transferred from one party to another.
👉 A trademark can be assigned for consideration by the registered proprietor.
🔑 Key Differences: Assignment vs Transmission
| 🔢 S. No. | 📝 Particulars | 📤 Assignment | 📥 Transmission |
|---|---|---|---|
| 1️⃣ | Voluntary or Involuntary | ✅ Voluntary act by trademark owner (assignor) | ❌ Involuntary (e.g., death or insolvency) |
| 2️⃣ | Written Agreement | 🖋️ Must be executed through a written agreement | 🚫 Not required; happens by law |
| 3️⃣ | With or Without Goodwill | 🔄 Can be with or without goodwill | 📉 Usually excludes goodwill unless inherited |
| 4️⃣ | Complete or Partial | ✅ Can be partial (limited rights) or complete | 🔀 Depends on situation (not partial/complete) |
🔄 Assignment with or without Goodwill
📌 Under the Trade Marks Act, 1999:
- A registered or unregistered trademark can be assigned with or without goodwill for:
- ✅ All goods/services
- ✅ Some specific goods/services
🚫 Restrictions on Assignment & Transmission
🚷 Assignment may be restricted where:
- It creates multiple exclusive rights in different individuals
- It causes territorial split of rights across India
📌 The Registrar of Trademarks may approve such assignments if they are not against public interest.
❗ Disputed Validity of Assignment
- If validity is disputed, the Registrar may refuse to register the assignment until:
- ✅ Rights are determined by a competent court
- 🔍 Further verification is provided
📜 Certification & Associated Trademarks
- ✅ Assignment of certification marks needs Registrar’s consent
- 🔗 Associated trademarks must be assigned together
🌐 Money Transfer Outside India
💸 If assignment involves foreign remittance, appropriate governmental permission must be furnished before recording the transaction.
🚫 Not Deemed Assignment with Goodwill (Cases)
Following are not deemed assignments made with goodwill:
🔹 Case (a):
Assignment of TM for some goods/services + goodwill of those only
🔹 Case (b):
Assignment for:
- Goods exported from India
- Services used outside India
- goodwill of export business only
🪜 Step-by-Step Trademark Assignment Process
✅ Step 1: Filing TM-P Form
- 📥 Application to be filed in Form TM-P within 6 months of acquisition
- 🕓 Can be delayed beyond 6 months (with extra fee)
💵 Fees:
- ₹9,000 (Online)
- ₹10,000 (Physical)
📂 Required Documents:
- 📃 Certified Assignment Deed
- 🆔 Identity Proof of both parties
- 🪪 Trademark Registration Certificate
- 🧾 Proof of Consideration
- ✅ No Objection Certificate (NOC) from Assignor
- 🖊️ Power of Attorney (if applicable)
- 📜 Declaration of no pending legal proceedings
✅ Step 2: Assignment Without Goodwill
Such assignments are not valid unless:
- ✍️ Assignor files Form TM-P within 6 months
- 📢 Assignment is advertised as per Registrar’s directions
- 📁 Proof of advertisement is submitted to satisfy the Registrar
❌ If directions aren’t fulfilled, the Registrar will not proceed.
✅ Step 3: Registration in TM Register
Once approved, 📘 the Registrar will enter assignment details in the official Trademark Register.