Nowadays the world of intellectual property, trademarks play a vital role in protecting a brand's identity and reputation. While registered trademarks enjoy robust legal protection, unregistered trademarks also hold value, especially in cases where a brand has established goodwill and recognition in the market. However, when it comes to transferring ownership of an unregistered trademark, the process requires careful documentation and adherence to legal formalities. One of the key aspects of this process is the use of the appropriate form for the assignment of the trademark. In India, the Form TM-16 is used for recording the assignment of an unregistered trademark.

What is an Unregistered Trademark?

An unregistered trademark is a brand name, logo, or symbol that is used in commerce but has not been formally registered with the trademark office. While it does not enjoy the same level of legal protection as a registered trademark, it can still be protected under common law principles, such as passing off, if the owner can prove prior use and established goodwill.

What is Assignment of a Trademark?

Assignment of a trademark refers to the transfer of ownership rights from one party (the assignor) to another (the assignee). This can be done for both registered and unregistered trademarks. In the case of an unregistered trademark, the assignment must be documented properly to ensure the transfer is legally valid.

Form TM-16: For Assignment of an Unregistered Trademark

In India, the Trademarks Act, 1999 governs the assignment of trademarks. While registered trademarks require specific forms for assignment (such as Form TM-24), unregistered trademarks are dealt with differently. The Form TM-16 is used to request the Registrar of Trademarks to record the assignment of an unregistered trademark.

Key Features of Form TM-16

  1. Purpose: To request the Registrar to record the assignment of an unregistered trademark.
  2. Applicability: Used when the trademark being assigned is not registered but has been used in commerce.
  3. Filing Fee: The fee for filing Form TM-16 is ₹900 per mark per assignment.
  4. Supporting Documents: The form must be accompanied by a copy of the assignment deed or agreement.

Step-by-Step Process for Assignment of an Unregistered Trademark

Step 1: Draft an Assignment Agreement

The first step is to draft a legally binding assignment agreement between the assignor and the assignee. This agreement should include:

  • Details of the assignor and assignee.
  • Description of the unregistered trademark being assigned.
  • Terms and conditions of the assignment.
  • Signatures of both parties.

Step 2: Prepare Form TM-16

Fill out Form TM-16 with the following details:

  • Name and address of the assignor and assignee.
  • Description of the unregistered trademark.
  • Date of the assignment agreement.
  • Supporting documents (e.g., assignment deed).

Step 3: Submit the Form and Pay the Fee

Submit Form TM-16 to the Trademark Registry along with the required fee. The form can be filed online through the IP India website or offline at the nearest Trademark Registry Office.

Step 4: Record the Assignment

Once the form is submitted, the Registrar will review the application and, if satisfied, record the assignment in their database. This provides public notice of the transfer of ownership.

Importance of Using Form TM-16

  1. Legal Validity: Recording the assignment with the Trademark Registry ensures the transfer is legally recognized.
  2. Public Notice: It provides public notice of the change in ownership, reducing the risk of disputes.
  3. Evidence of Ownership: The recorded assignment serves as evidence of ownership in case of legal disputes.

Example of Assignment of an Unregistered Trademark

Scenario: A small business owner, Mr. Sharma, has been using the brand name "GreenLeaf" for his organic tea products for the past 5 years. He decides to sell his business to Ms. Kapoor, including the rights to the unregistered trademark "GreenLeaf."

Process:

  1. Mr. Sharma and Ms. Kapoor draft an assignment agreement, transferring ownership of the "GreenLeaf" trademark.
  2. They fill out Form TM-16, providing details of the assignor (Mr. Sharma), assignee (Ms. Kapoor), and the trademark.
  3. They submit Form TM-16 to the Trademark Registry along with the assignment agreement and the required fee.
  4. The Registrar records the assignment, and Ms. Kapoor becomes the new owner of the "GreenLeaf" trademark.

Key Points to Remember

  1. Proper Documentation: Ensure the assignment agreement is clear, detailed, and legally binding.
  2. Timely Filing: Submit Form TM-16 promptly after the assignment to avoid complications.
  3. Public Notice: Recording the assignment with the Trademark Registry provides public notice and legal protection.