Trademark Assignment & its Renewal

12th July, 2024 - 6:30 am Categories: Trademark 0 Comments

INTRODUCTION

Trademarks can be sold; therefore, trademark transfer or trademark assignment is possible. Trademark assignment means the control of a trademark switches from one person to another. It can be a transfer of part of the brand or all of it and it entails transfer of goodwill of the trademark as well. This is an explanation of the following aspects of trademarks as property; how, why and what it means to buy or sell trademarks, legal processes and principles involved, all within the context of trademarks.

UNDERSTANDING TRADEMARK ASSIGNMENT

Trademark assignment is a legal act, in which the owner of a trademark registration or an application for registration gives the rights regarding the said mark to another party. This transfer can involve the trademark, the right to use it, and the value assigned to the brand’s reputation. Goodwill is a component of the value in kind as it is the solidified loyalty of customers the trademark is emblematic of.

TYPES OF TRADEMARK ASSIGNMENTS

1. Full Assignment: In essence, assignment embraces the absolute appropriation of the trademark together with the goodwill.
2. Partial Assignment: They are not transferred on an exclusive basis and are limited to certain classes of goods and services. The assignor however remain to be the owner of the other goods or services.
3. Assignment with Goodwill: This transfer also refers to the mark and any business goodwill that relates to the mark.
4. Assignment without Goodwill: No business goodwill passes from one owner to another; this is only that logo or trademark used by the business entity.

REASONS FOR TRADEMARK ASSIGNMENT

1. Business Sales: Trademarks are frequently bundled within a business when it is bought and sold, which indeed is the case with this business.
2. Licensing Agreements: Many organizations use trademarks to cover licensed businesses or to be used in consortiums, thus being assigned to the respective parties.
3. Corporate Restructuring: Trademarks may be transferred for changes, mergers, or acquisitions, or during any restructuring exercise.
4. Financial Transactions: A trademark can be pledged in conditions of securing credit facilities or in any kind of financial transactions.

STEPS OF TRADEMARK ASSIGNMENT

1. Agreement Preparation: As a result, the trademark assignment agreement is a legal instrument that both the assignor and the assignee must agree and prepare. Another minute which should be incorporated in the document is that the agreement of the transfer should outline not only the assignment but also the consideration and the nature of both parties rights and liabilities.
2. Consideration: Normally, the assignee makes a payment or ‘consideration’ in any way or form to the assignor as agreed in the assignment agreement.
3. Execution of Agreement: The trademark assignment agreement is a business contract, which is duly executed by both the assigning party and the assigned party. The contract has to be written and signed to be enforceable at law by the intending parties.
4. Recording the Assignment: Another relevant step is that to be legally protected, the assignment must be registered with the appropriate trademark office. In the United States, assignments are regulated and documented with the United States Patent and Trademark Office (USPTO). They are registered with the Controller General of Patents Designs Trade Marks in India.
5. Filing Fees: Meeting of any fees required for making the assignment in as a record. These fees are also varying depending on the jurisdiction of the user.

CONSEQUENCES OF TRADEMARK ASSIGNMENT

1. Transfer of Rights: As soon as the assignment has been made there are changes in the status of the trademark, and the trademark becomes vested in the assignee who is then entitled to the exclusive use of the trademark and the right to license and enforce the same.
2. Goodwill: If the assignment of the trademark was accompanied by goodwill, the assignee also takes over the repute of the business for which the trademark was used. This means that ‘PIN notices’ without underlying consumer goodwill might be vulnerable to scrutiny when it comes to ensuring they do not provide consumers with misleading information.
3. Public Notice: Filing the assignment with the trademark office serves the public announcement of the transfer of the assignment, for the sake of preserving the register’s sanctity.
4. Tax Implications: The main concern is that this transaction, though it may be simple in otherwise, may have tax implications which will suit any of the two parties depending on the jurisdiction and nature of consideration.

KEY CONSIDERATIONS

1. Due Diligence: However, before proceeding with any assignment it is always advisable that few precautions should be taken to confirm that the Trademark is correct and whether the sale is genuine.
2. Legal Advice: It would be wise to consult with a trademark attorney in order to get a feel or the general guidelines of the trademark law and more specifically to find out what legal requirements surround the assignment.
3. Global Implications: If the trademark has been registered in many areas of the world, it must be possible to file the assignments in all the areas where recognition of new ownership is desirable.

TRADEMARK RENEWAL: PROCEDURAL OVERVIEW

1. Identifying Renewal Deadline: Trademark registrations are usually given for a prescribed period, which is normally 10 years, though they must be renewed every now and then to remain in force. Renewal date is another important factor and then it is easier to ensure that it is renewed in time.
2. Preparing Renewal Application: A renewal application must be complete, and it should contains some basic information such as the registration number of the trademark, the current status of the trademark and the details of the owner of the trademark. In certain legal systems, continued usage may have to be availed as evidence.
3. Filing the Renewal Application: A renewal application may be filed either through a claim of use or a statement of use depending on the status of the trademark and must be submitted to the corresponding trademark office before the expiration of the renewal period. The application can be made either online or by post depending on the rules set by the country/jurisdiction where the incorporation is going to take place.
4. Paying Renewal Fees: The application to renew the trademark must be filed together with renewal fees associated with the particular trademark. It is also important to note that the precisely of the fees may also differ from one jurisdiction to another and based on the type of a trademark that one intends to register.
5. Review and Processing: The renewal application and the corresponding fees have to be filed for the renewal to be considered The trademark office will then analyze the application to determine whether it complies with the set down guidelines and procedures. If no objections have been lodged, the trademark will be renewed, and a new certificate of registration will be registered.
6. Issuance of Renewal Certificate: If the application is granted, the trademark office will furnish the applicant with a renewal certificate signifying that the trademark registration has been renewed to the concerned term.

IMPORTANCE OF TIMELY RENEWAL

1. Maintaining Rights: Renewal helps the trademark owner to retain its privileges of using the trademark in relation to the goods or services that are registered under the trademark. Others of these rights include the right to use domain names which may be lost if renewal is not made.
2. Preventing Exploitation by Others: An expired trademark registration allows third parties to use the trademark, which leads to dilution of the trademark, loss of reputation locally or globally depending on the registration, and thus customer confusion.
3. Avoiding Re-Registration Process: In such circumstances the owner is forced to design a new trademark and re-register it through a more lengthy and expensive process to enjoy the protection again.
4. Preserving Priority Date: Renewal simply ensures that the original trademark gets to retain its priority date meaning it gets to hold as much power in cases of disputations as possible.

CONCLUSION

Trademark renewal entails the making of specific documents and paying the requisite charges in order to retain the trademark. Trademark renewal is important, in order to keep the trademark valid and effective so that nobody else benefits out of it. Here is a detailed narrative on the steps involved in trademark renewal and the reason why trademark renewal should not be delayed.

Renewal of a trademark is an essential activity, which preserves the protection of the trademark in a given jurisdiction. Over time this paper explains the various processes that are applicable as well explicating the need to ensure that the trademarks are renewed at the right time, trademark owners will thus be in a position to guard their trademark rights and brand reputation. To avoid missing renewal deadlines one should keep tab on its renewal dates and one should consult an expert in case there is some doubt regarding the renewal procedures.

Author: Kaustubh Kumar, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

REFERENCES

1. https://cleartax.in/s/assignment-of-trademark
2. https://www.indiafilings.com/learn/trademark-assignment/
3. https://www.uspto.gov/trademarks/trademark-assignments-change-search-ownership
4. https://blog.ipleaders.in/trademark-assignment-india-reference-transmission-assignment-agreements/
5. https://vakilsearch.com/ipindia/trademark-assignment
6. https://cleartax.in/s/trademark-renewal
7. https://ipindiaonline.gov.in/trademarkefiling/UsefullDownloads/User_Manual_TM_R.pdf
8. https://muds.co.in/trademark-renewal-in-india/
9. https://www.indiafilings.com/trademark-renewal