Trademark Assignment Agreement India
Assigning Trademark Rights In India
The Trademark Act, 1999 provides for trademark assignment under Section 37. The provision states that the registered proprietor of trademark can assign the trademark to another, with or without the goodwill of the business concerned and in respect of either all the goods or services or some of the goods or services only, in respect of which the trade mark is registered . Th Act also provides for the assignment of an unregistered trade mark, with or without the goodwill of the business concerned.
Where a person becomes entitled to trademark rights by assignment, then he shall apply for the same in the prescribed manner to the Trademark Registry for registration of his title in the mark. Thereafter, the Registrar will , on receipt of the application and on proof of title register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment has been done. Particulars of the assignment will also be entered in the Register of Trademarks.
An application to register the title of a person who becomes entitled by assignment is made on Form TM-P. Here, it would be relevant to mention that as per the provisions laid down under the Indian Stamp Act, a stamp duty @ 5% is payable on an instrument based on the consideration amount mentioned.
Proof of Title:
According to Rule 77 of the Trademark Rules, 2017, the Registrar may, if he has reasonable doubt about the veracity of any statement or any document furnished for assignment, call upon the Assignor to furnish such proof or additional proof of title as he thinks fit.
An application made for trademark assignment shall be dispose of ordinarily within three months from the date of application.
Official Fee for Trademark Assignment Agreement in India
The Official fee to register a subsequent proprietor in case of trademark assignment for each trademark is INR 9000/- when the request for recordal of trademark assignment is filed online and INR 10000/- when the request is filed physically at the Trademark Office.
|On what payable
|Official Fee (INR)- Physical filing
|Official Fee (INR)- E-filing
|On application to register a subsequent proprietor in case of assignment for each trademark
*This is cost includes only the official government fees and does not include any professional fee.
The “First Schedule” appended to Rules, providing for the official fees for assignment of trademark can be accessed here.
Non-Registration of Assignment Deed not Fatal to Trademark Rights of Assignee
In the aforesaid context, it would be relevant to make reference to some cases which help in streamlining the law relating to trademark assignment agreement in India.
The Hon’ble High Court of Delhi in 2020 had adjudicated two interim applications in the matters of M/s Liberty Footwear Company vs. Liberty Innovative Outfits Limited and M/s Liberty Footwear Company vs. M/s Liberty Fashion Outfit while determining the effects of non-registration an of assignment deed. After hearing the parties in the case, the Court reiterated that delayed registration of an assignment deed by the Registrar under Section 45 of the Trademark Act, 1999, is not fatal to the assignment of a trade mark.
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