Updated on: Oct 12th, 2021
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6 min read
Trademark is an intellectual property of a business and constitutes any design, words, or expressions that are unique to a business and makes it identifiable to the business. The trademark is registered by the business and all the rights of usage lie with the business.
The trademark can be transferred to a third party either by license or assignment. The assignment of the trademark is the transfer of an owner’s right, title, and interest in a trademark or service mark. The assignment of the trademark is transferring the ownership, unlike licensing, which is only the permission to use the trademark. The one who assigns the trademark is the assignor, and the one who it is assigned to is the assignee.
The reason for an assignment can be that the maintenance of the intellectual property in terms of maintaining registrations, defending third party claims, and creating and marketing the trademark can be very draining for the company’s resources. So the business decides to sell off that is to assign the trademark and monetize the intellectual property. It could be a standalone sell-off or as a part of the sale of tangible and intangible assets of the business.
The notarisation of the assignment is in the benefit of the assignee. Also, notarising is important so that it is established that there is no possibility of wilful document fraud relating to the assignment. And so the assignment must be notarised on the right stamp duty. Further, the assignor must also submit an affidavit which is notarised mentioning that the trademark is truly theirs.
There are four types of trademark assignments:
The elements that are mostly required for the assignment to be valid are as follows:
The trademarks can be registered trademark or unregistered trademark. The process for recording the assignment of the two types is as follows:
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A trademark is a unique design or word identifying a business. Trademark Assignment transfers trademark ownership. Notarizing a trademark assignment is crucial to prevent fraud. There are 4 types of trademark assignments: Complete, Partial, With Goodwill, Without Goodwill. Elements required for a valid trademark assignment include parties, trademark identification, consideration, and notarization. A procedure for recording a trademark assignment with the registrar is outlined for both registered and unregistered trademarks.