Trademarks are intangible assets and are attached to goods and services. However, the trademark owner can assign his trademark to another person. Trademark assignment is when a trademark owner transfers ownership of his/her trademark to another organization or individual. The transfer of a trademark depends on the will of the parties, but this activity is still under the management of the state through the registration of a trademark transfer contract with the competent state agency in charge of Industrial property rights.
Conditions for trademark assignment
- The transfer of a trademark must be done in the form of a written contract.
- A trademark assignment contract is only valid when it has been registered at the state management agency in charge of industrial property rights.
Conditions restricting the transfer of trademarks
Not all trademarks registered with the competent state agency are transferable and not all entities can transfer/receive a trademark assignment. The Intellectual Property Law has several restrictive conditions for trademark assignment that must be followed:
- Trademark owners may only assign their rights within the scope of protection;
- The assignment of rights to the mark must not confuse the characteristics and origin of goods or services bearing the mark;
- The rights to the mark shall only be transferred to an organization or individual that meets the conditions for the person having the right to register the mark.
Contents of the trademark assignment contract
- Full name and address of the assignor and assignee;
- Grounds for transfer;
- Transfer price;
- Rights and obligations of the assignor and transferee.
The parties may agree on other terms that are not contrary to the provisions of law.
Trademark transfer procedures
Step 1: The parties agree and establish a trademark assignment contract.
Step 2: Register the trademark assignment contract at the National Office of Intellectual Property.
The transferor submits a set of applications for registration of a transfer contract at the National Office of Intellectual Property. The profile includes the following documents:
- Registration form according to the prescribed form;
- The original or valid copy of the contract;
- The original of the protection title;
- The written consent of the co-owners, the written explanation of the reasons for the disagreement of any of the co-owners on the transfer of rights if the trademark ownership is jointly owned;
- Proof of payment of fees and charges;
Step 3: Receive and process the application for registration of a trademark assignment contract
If the registration dossier is valid, the NOIP will perform the following activities:
To issue a decision to issue a Certificate of the signing of a trademark assignment contract to an individual or organization.
Then proceed to record and protect the new owner, record the transfer of ownership rights for the trademark and the National Register of Industrial Property Rights Transfer.
Publish the decision on granting the Certificate of registration of the industrial property right transfer contract in the Industrial Property Official Gazette within 2 months from the date of signing the decision.
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