TRADEMARK ASSIGNMENT, RENEWAL AND RESTORATION
What is Trademark Assignment, Renewal And Restoration?
Trademark Assignment- Just as in the case of physical property such as land, every owner of a Brand or Trademark has the right to sell, license, transfer, etc. its respective brand or trademark in accordance with legal procedures. A brand or Trademark owner can transfer his rights with respect to his trademark either by way of assignment or by licensing. In India, The Trade Marks Act, 1999 deals with assignment as well licensing of trademarks.
Assignment of a trademark occurs when the ownership of such mark as such, is transferred from one party to another whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.
Types of Trademark Assignment:-
1. Complete Assignment to another entity-The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc.2. Assignment to another entity but with respect to only some of the goods/services- The transfer of ownership is restricted to specific products or services only. This is called partial assignment.
3. Assignment with goodwill- Such assignment is where the rights and value of a trademark as associated with the product is also transferred to another entity.
4. Assignment without goodwill-Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer.
Trademark Renewal- The registration of a trademark is valid only for a period of 10 years. After which, it can be renewed from time to time. Trademark renewal preserves those rights which are only available to a registered mark. In case the proprietor fails to renew the trademark, then he shall lose all the protection that comes along with registration. For example, a registered trademark has the benefit of the legal presumption of ownership. That means that the burden of proof is on others to try and disprove your ownership.
Trademark Restoration- If a trademark has been removed from the Register of trademarks on the grounds of non-renewal then the same can be restored by filing an application in the prescribed form for restoration of the mark.
Advantages of Trademark Assignment, Renewal And Restoration-
1. Unlock Value- With the help of the assignment agreement, the owner of the brand is able to unlock the value of the brand which was at this point only had value on papers. The assignee on another hand could be significantly better off entering a market with an already well-known brand, rather than building a new one entirely.2. Valid Proof- In case of any dispute which is related to the trademark, legal rights would easily be established only through the deed of assignment.
3. Advertising- Renewal of trademark distinguishes your products from that of your competitors and also gives a right to use the mark.
Procedure for Trademark Assignment-
1. Assignment of Unregistered Trademark- An unregistered trademark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.
2. Assignment of a registered trademark- Trademarks can be either assigned in full or transmitted in part, with or without the goodwill of the business. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks.
3) File form Spice+ Part Afor reservation of name. Two names can be proposed in application. CRC on being satisfied may reserve the name for a period of 20 days from the date of approval.
Procedure for Trademark Renewal-
1. Form TM-R has to be filed which is an application for renewal before the Registrar. This application can be filed on or before 6 months from the date of expiration of the registration.
Procedure for Trademark Restoration-
1. An application has to be made from 6 months to 1 year after the date of expiration of such registration. The proprietor has to file a prescribed form TM-R to request restoration.
2. After receiving applications to either renew or restore the trademark, the Registrar shall advertise the mark once again and invite objections from people who have reason to believe that the trademark should not be renewed or restored. After the lapse of the prescribed waiting period, if there are no objections raised, then the mark will be entered in the register of trademarks. The entry shall specify that the mark has been renewed for a period of 10 years.
Documents Required for Trademark Assignment, Renewal And Restoration
1. Certificate of Trademark Registration
2. Details of the Party (Name and description of the assignor and assignee) for assignment of trademark.
3. No Objection Certificate from the original owner of the registered trademark for its assignment.
4. Power of Attorney in Form TM-48.
5. Trademark Application Number along with class of trademark.