Deed of Assignment of Trademark (Applicable in case of affiliated parties)
A Deed of Assignment of Trademark is a document through which the registered proprietor of a trademark transfers his/her/its rights, title and interest in the trademark to a third party. This gives the third party the right to use the trademark of the owner.
Once the Deed of Assignment is done it is required to be registered with the Registrar of Trademarks.
The difference between an assignment and a trademark is that a license allows the licensor to retain their rights and interests in their IP while an assignment transfers, all of the assignor’s rights and interests to the assignee.
This Deed is applicable in the following scenarios:
- where the assignment is limited to the use of the trademark for specific products, purposes and within a particular area;
- where the Assignee is an affiliate or a business partner i.e distributor or marketer of the Assignee; and
- where the assignment is limited to the period within which the Assignee is in business with the Assignor.
This Deed also contemplates that the goodwill of the business is being assigned. If the goodwill of the business is not being assigned, please amend appropriately.