A trademark assignment is a written document which help to transfer a recognized word , phrase , symbol or a design from the original owner to the another owner . The original owner of the license is known as the “Assignor” and the future owner is known as the “Assignee” . Where as the assignor is the proprietor of the trademark and whereas as the Assignor has agreed with the Assignee to assign sell and transfer the said trademark to the assignees . This assignment occurs when there is a transfer of owner’s right , title with respect to the trademark or In simple language we can say that it’s the transfer of ownership with or without the goodwill of business . Assigning of trademark can be done through a trademark assignment agreement and it will be registered as per The Trademark Act , 1999 . It can be proved by oral evidence , so we should always prefer oral assignment . one of the most important element of this agreement is that there must be an intention on the part of the owner of the trademark for transferring ownership. The concept of trademark licensing allows others to use the mark without the assignment of ownership. The Trademark Act does not talk about the license, rather it is mentioned under ‘registered user. It is beneficial to both the parties, the licensor enjoys the rights of the mark through royalties, and the licensee gets the power to expand its market operations using the brand name.
Assignor hereby conveys his all the rights AND interest of whatever kind in and to the trademark , together with the following things :
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The goodwill of the business relating to the Products/Services in respect upon which the trademarks are used and for which they are registered.
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All income, royalties, and damages hereafter due or payable to ASSIGNOR with respect to the trademarks, including but without limitation, damages and payments for past or future infringements and misappropriations of the trademarks.
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All rights to sue for past, present and future infringements or misappropriations of the trademarks.
The assignor confirms that no disputes in respect of the trademark/s is pending in any of the court of law . The assignor and assignee confirm that there is remittance of funds in or outside India in connection with this assignment . The assignor on the request of assignee conveys that it will execute all the documents, papers , forms and authorization that may be securing , completing or vesting in assignee full right , title and interest in trademark . In case the trademark is registered , such as assignment has to be recorded in the Registrar of Trademark . Thus the said registered trademark have becomes as from the date of this deed the absolute property of the assignee on a worldwide basis . The Assignee would take the necessary action to effect the registration of this deed at the registrar’s office concerned and for the payment of taxes , if any , on the financial transaction. It is the most prized possession because it aids the customers to associate with the recognized brand quickly . Governing law in case of any disputes would be of the country origin .
So coming to the conclusion Trademark assignment is the most crucial step which
opens a great of opportunities for growth of the business. Although it is not
mandatory, one should always get a trademark assignment agreement, as this
allows the parties to exercise the rights over any third parties. Additionally, the
whole procedure for trademark assignment is easy, therefore it is advisable to
get trademark assignment as soon as possible.
