Trademark Assignment — Applicable Law
Trade Marks Act 1999 — ss.37–45 (Assignment & Transmission) Trade Marks Rules 2017 — Rules 68–74, Form TM-P Indian Contract Act 1872 Indian Stamp Act 1899 A registered trademark may be assigned with or without the goodwill of the business. Assignment without goodwill requires statutory advertisement (s.42). Form TM-P must be filed with the Trademarks Registry to record the change of ownership.
DEED OF ASSIGNMENT OF TRADEMARK THIS DEED OF ASSIGNMENT OF TRADEMARK ("Deed") is made and executed on [DATE] by and between:
1. Acme Brands Private Limited , having its principal place of business / address at Assignor address (hereinafter referred to as the "Assignor", which expression shall include its successors and permitted assigns); AND
2. NewCo Technologies Private Limited , having its principal place of business / address at Assignee address (hereinafter referred to as the "Assignee", which expression shall include its successors and permitted assigns).
The Assignor and Assignee are hereinafter collectively referred to as the "Parties".
1. Background
The Assignor is the registered owner / applicant of the trademark "ACMETECH " (device: Stylised letter A in blue and orange ), bearing Application / Registration No. 5012345 in Class(es) Class 9, Class 42 in respect of Software as a service (SaaS); computer software; IT consultancy services , registered / filed with the Office of the Trade Marks Registry, India ("Trademark"). The Assignor has agreed to assign the Trademark to the Assignee on the terms and conditions set out in this Deed.
2. Assignment
In consideration of the sum of ₹[Consideration] paid by the Assignee to the Assignor (the receipt and adequacy of which the Assignor hereby acknowledges), the Assignor hereby ASSIGNS, TRANSFERS, and CONVEYS to the Assignee, by way of complete assignment together with the goodwill of the business concerned, with effect from [EFFECTIVE_DATE], all the Assignor's right, title, and interest in and to the Trademark, including:
(a) the registered / applied-for trademark "ACMETECH " bearing Registration / Application No. 5012345 ;
(b) all renewals, extensions, and continuations of the registration;
(c) the goodwill of the business connected with the use of the Trademark;
(d) the right to sue for past infringement and to retain any damages or compensation awarded;
(e) all pending applications and proceedings relating to the Trademark.
3. Assignor's Representations and Warranties
The Assignor represents and warrants that:
(a) the Assignor is the sole and exclusive owner of the Trademark and has the full right, power, and authority to assign the same;
(b) the Trademark is valid, subsisting, duly registered, and not subject to any cancellation or revocation proceeding;
(c) the Trademark is free from all encumbrances, liens, licences, and adverse claims;
(d) the Assignor has not granted any licence or sub-licence in respect of the Trademark that would survive this assignment;
(e) to the Assignor's knowledge, the use of the Trademark does not infringe any third party's intellectual property rights.
4. Assignee's Obligations
The Assignee agrees to:
(a) file Form TM-P with the Trademarks Registry within 6 months of this Deed to record the change of ownership;
(b) pay all renewal fees and maintain the Trademark in force;
(c) prosecute, defend, and protect the Trademark against infringement;
(e) indemnify the Assignor against any claims arising out of the Assignee's use of the Trademark after the Effective Date.
5. Further Assurance
The Assignor shall, at the Assignee's cost and request, execute such further documents, deeds, and instruments, and do all such acts and things, as may be necessary or desirable to give full effect to this assignment, including signing Form TM-P or any power of attorney required for TMR filings.
6. Stamp Duty and Costs
This Deed shall be duly stamped under the applicable provisions of the Indian Stamp Act 1899 / relevant State Stamp Act. The stamp duty and registration charges (if any) shall be borne by the Assignee. Each Party shall bear its own legal costs in connection with this Deed.
7. Governing Law
This Deed is governed by and construed in accordance with the laws of India. Any dispute arising out of or in connection with this Deed shall be subject to the exclusive jurisdiction of the courts at [CITY] or, at the election of either Party, resolved by arbitration under the Arbitration and Conciliation Act, 1996.
IN WITNESS WHEREOF the Parties have executed this Deed on the date first written above.
For and on behalf of ASSIGNOR
__GAP[tma_assignor_name|Acme Brands Private Limited]__
Priya Sharma, CEO
______________________
For and on behalf of ASSIGNEE
__GAP[tma_assignee_name|NewCo Technologies Private Limited]__
Rahul Verma, Director
______________________
WITNESSES:
1. Name: ___________________ Signature: _______________ Address: _______________
2. Name: ___________________ Signature: _______________ Address: _______________
Acknowledged by both parties
ANNEXURE — TRADEMARK DETAILS
Trademark: ACMETECH
Application / Registration No.: 5012345
Nice Class(es): Class 9, Class 42
Goods / Services: Software as a service (SaaS); computer software; IT consultancy services
Registration Date: [REG_DATE]
Renewal Due: N/A