Trade Mark Assignment Agreement

A Trade Mark Assignment Agreement ("Assignment Agreement") is a legal document under which the Trade Mark owner, known as the "Assignor," assigns another person or entity to own such rights, known as the "Assignee", in exchange for an agreed payment, known as a "Consideration".

Trade Mark is a word or symbol representing a company or product. A Trade Mark can be one that is registered under the Trade Marks Act, 1999 or one that is established by continuous and prolonged use of such a word or symbol in relation to a particular company or product. For example, APPLE, GOOGLE, TATA, etc.

As per the Trade Mark Act, 1999, the Assignment of Trade Mark has to be done by execution of the assignment deed in writing. Both the registered and unregistered Trade Mark under the Act can be assigned to a third party.

An assignment Agreement is different from a License Agreement, under an Assignment Agreement, the Assignor gives away all the rights over the Trade Mark for a fixed amount or consideration and will not be entitled to use such Trade Mark or receive regular Royalty payments on it. On other hand, under the License Agreement, the owner of the Trade Mark grants permission to another person to utilize the Trade Mark in a particular manner for a limited period of time.

The Assignment Agreement can be of two types:

• Assignment with goodwill: The Assignor transfer absolute rights and values associated with the Trade Mark to the Assignee. After entering into this Agreement, the Assignor will not be able to use any goods or services related to the Trade Mark. For example, ABC Ltd owns a Trade Mark with the wordmark "GREENGO" registered under classes 35 and 42. Under this arrangement, ABC assigns all its rights over the Trade Mark "GREENGO" in relation to Classes 35 and 42 along with any other classes registered in the future.
• Assignment without goodwill: Under this, the Trade Mark related to particular goods or services will be assigned to the Assignee and the Assignor will retain the right to use and assign the goods or services which are not assigned to the Assignee under this Agreement. For example, XYZ Ltd owes a Trade Mark with the wordmark "ORANGE TECH" registered under classes 30 and 39. Under this arrangement, XYZ assigns the Trade Mark to the assignee only in relation to class 30 and retains the rights over class 39 and any future classes under the same name.

Restrictions on assignment of Trade Mark:

• Restriction on assignment or transmission where multiple exclusive rights would be created. Thus, the same or similar goods or services cannot be assigned to different entities or people. If different Trade Marks are assigned, such assignments should not cause any confusion among the users of such goods or services.
• Restriction on assignment or transmission when exclusive rights would be created in different parts of India. Thus, the Trade Mark cannot be assigned to different people on a geographical basis within the boundaries of India.

How to use this document?

This Agreement covers the following major provisions:

• Parties: The type and details of the parties i.e. Assignor and Assignee are included under this Agreement. The Parties can be an individual, company, partnership, LLP and so on.
• Description of Trade Mark: the details about the Trade Mark can be mentioned under this Agreement. If required, a detailed description can be mentioned under Schedule-A to the Agreement.
• Assignment of Trade Mark: defines the assignment of Trade Mark and denotes whether the Trade Mark is assigned with or without the goodwill.
• Consideration: It includes the method of calculation of consideration payable by the Assignee, how it will be paid to the Assignor and who will bear the cost of GST (Goods and Services Tax) payable on such transaction. This clause also includes the penalty for any late payment of Consideration by the Assignee.
• Warranties: The warranties or promises by both the Assignor and Assignee regarding their capacity to enter into this Agreement, ownership over the Trade Mark, compliance with the terms of this Agreement and laws are included. If required, such additional warranties can be mentioned under this clause.
• Confidentiality: Under this, both parties agree not to disclose confidential information including trade secrets, know-how, plans and so on to any third parties. If required, a separate detailed non-disclosure agreement can be signed between the parties.

Once the details are filled in, this Agreement can be printed on non-judicial stamp paper of value prescribed by the concerned state where this Agreement is executed. The Agreement has to be signed by two independent witnesses who are not a party to this Agreement and must be notarized by a notary located in the place where this Agreement has been executed.

Once the Agreement is executed and notarized, it needs to be registered with the Registrar of Trade Mark within six months.

Applicable Law?

Assignment of the Trade Mark is covered under the Trade Marks Act, 1999. Only those assignment agreements registered with the Registrar will have protection under this Act.

An Assignment Agreement is a contract and general principles of the Indian Contract Act, 1872 will be applicable.

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