Trademark is an intellectual property and like any other asset, the owner of a trademark has the right to sell, license or transfer the owned intellectual property. Such a transfer can be made through Trademark Assignment Agreement or through Licensing.
Types of trademark assignment in India
All the rights vested in the trademark are assigned to the third party, including the rights to further transfer, to earn royalties, to license, etc.
Assignment limited to only some goods/ services
In this assignment, the transfer of ownership is restricted only to certain products/services as decided in the Trademark Assignment Agreement.
Assignment with Goodwill
In this case, the value and the rights attached to the trademark are also transferred. This makes new owner of the trademark eligible to use the assigned brand name with respect to the products and services already sold under the brand name. Also, it grants permission to use the acquired trademark for any new venture or product the new owner creates or manufactures.
Assignment without Goodwill
Also known as Gross Assignment, here the brand owner restricts the rights of the assignee, limiting user rights of the new assignee and prohibiting him/her from using the brand name for the products already in use by the assignor. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand is not transferred to the buyer.
Documents required for Trademark Assignment in India
Certificate of Trademark Registration (if any)
Details of the Party
Name and description of the assignor and assignee
No Objection Certificate from the original owner of the registered trademark