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Aug 6th, 2022
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What are the documents required for licensing a trademark assignment ? A valid identity proof of both parties, a copy of the assignment agreement and a filled form TM-P of Trademarks Act 1999 must be produced along with fee payment.
Restrictions on Assignment of Trademark The assignor cannot assign a trademark when the assignment results in the creation of exclusive rights in different persons with relation to the same or similar products or services and will likely deceive or cause confusion.
Under trademark assignment without goodwill, the assignor restricts the assignee from operating in the market where the assignor is already active. The assignee is permitted to use the same trademark but not for identical services/services as the assignor.
An assignment-in-gross occurs when a business owner assigns their trademark without including the underlying goodwill (i.e. the inherent value and name recognition associated with the mark) and any other accompanying assets.
The trademark assignment document must be signed by the assignor or owner of the trademark in favor of the assignee or the new owner receiving the property rights over the trademark. Thereafter, the trademark assignment must be recorded with the Trademarks Office to reflect the new ownership.
Procedure to Assigning Trademark without Goodwill In the case of the trademark that is pending registration, the following needs to be done: Filling out the required form TM-M. Submitting the statutory Fees of ₹ 1,000/- in case of offline filing. Submitting the statutory fees of ₹ 900 in case of online filing.
Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is being examined or after your trademark has registered.
In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning now for then.A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

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