fee for assignment of trademark

USPTO Trademark Assignment: Everything You Need To Know

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. 3 min read

Updated November 25, 2020:

USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of intellectual property (IP). Because this is considered an asset, it can be assigned. Assignment means to transfer the ownership rights of your trademark to a third party in exchange for profit or benefit. Registered and pending trademarks, as well as patents and patent applications, can be assigned. You must file an assignment agreement with the USPTO. Business reorganization, acquisition, and other circumstances may result in a trademark assignment.

Steps in Assigning a Trademark

• Draft an assignment agreement and have it signed by both parties. Name the person or company buying the trademark as the assignee and the current trademark owner as the assignor. Clearly identify both these parties as well as the trademark in question. Establish terms such as the cost of the trademark, how disputes about the assignment will be settled, and who will pay the transfer fee.
• Fill out the Recordation Form Cover Sheet, which can be completed online. You'll need to include the name and address of a registered agent to receive official USPTO information.
• Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit. This can be done online, by fax, or through standard mail. The latter two options require you to establish a deposit account to pay the USPTO recording fee. Mailed forms can be submitted with a money order or check payable to the USPTO director.
• If your trademark is state-registered, you must also record the transfer with the applicable state.
• The USPTO Patent and Trademark Database will be automatically updated for assignments as well as name changes and mergers. When filling out your form, check one of those boxes for the nature of conveyance to ensure that records are updated. Do not select other, which will not update the record. The records will also not be updated if you file multiple documents with the same execution date, the application is in a blackout period, or you have exceeded the allowed number of ownership changes. In these cases, you must make a written request to have the database updated.
• Choose the correct conveyance type, either assignment of part of the interest or assignment of the entire interest along with the associated goodwill.

Points To Remember

All trademark transfers must also include the mark's associated goodwill . This includes the earning power created by customer recognition of the mark. Trademark assignment may be found invalid if the goodwill does not accompany the transfer of the mark.

Failing to follow the ownership transfer procedures can result in liability if the assignee infringes on a third-party trademark. If you buy a trademark and the original owner does not transfer ownership, a dispute could result.

Check the database to determine whether the updates have been made. Click ownership to display the current owner or assignment to display the entire chain of title.

Do not use assignment if you simply need to change your name as the trademark owner. Instead, record the name change through the USPTO Assignment Recordation Branch .

Patent and Trademark Ownership

When it comes to a patent, owning the patent gives you the exclusive right to sell, manufacture, and use the invention in question. Patents last for 20 years while trademark registration lasts for 10 years and can be renewed. The term ownership references the current holder of a trademark or patent. If you own a registered trademark, no one else can use that mark on their products or services, and imports carrying an infringing mark may be blocked from entry by U.S. Customs and Border Protection.

Assignment Fees

While trademark assignment once carried a $25 fee and a $40 fee was required for trademarks, the USPTO recently discontinued this fee for patents and not for trademarks. That's because trademarks are rarely assigned while the assignment is quite common in the fast-paced world of patents.

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The following are the trademark fees charged by the United States Patent and Trademark Office.  Patent Fees  are listed separately.

Note that most PTO fees are "per class" - that is, if the goods or services fall under more than one class in the International Classification of Goods and Services, then you must pay a separate fee for each class of goods. For example, if you are selling mugs (Glassware, Class 21) and t-shirts (Clothing, Class 25), you'd need to pay double the filing fees for a single class application. On the other hand, mugs, glasses and plates would fall into just class 21, so filing for these goods would only incur one filing fee. For a list of acceptable goods and services descriptions, with classes, see the " Trademark Identification Manual " on the USPTO website. 

For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO's General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. A complete copy of the USPTO's fee schedule is also available from  their website

Most trademark fees increased,  effective January 14, 2017 . Also, additional fees for filing on paper are imposed for most filings.

Note: these fees are correct as of January 2, 2021. As USPTO fees are subject to change, be sure to check for the latest fees before filing anything. 

The preceding information was retrieved from the USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees.

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Updated 28 June 2023

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1. Apply for a trade mark

Apply for a UK trade mark online or to designate the UK for an International Registration governed exclusively by the Madrid Protocol.

2. Trade mark search services

Use these services to search for other trade marks, track the progress of trade marks or search for classes before you apply.

3. Update trade mark details

Use the TM21B to remove a class, or limit or remove goods or services within a class before a trade mark is registered. The TM26R is to rectify the register for registered trade marks.

4. Update details of the owner or the representative

Use these forms if you need to update personal/representative details for an application. For example, notifying the IPO that you have sold your trade mark, changed address or appointed a representative.

5. Renew or restore a trade mark

Use the TM11 if you need to renew a trade mark online or the TM13 to restore a trade mark.

6. Request documents or information

You can access information about a trade mark for free via the Track a trade mark service.

7. Request for an extension of time

If your trade mark has not yet been registered, you can first speak with your examiner to discuss an extension of time.

8. Appeal an examiner or tribunal decision

You can also speak with your examiner to discuss your options before you decide to appeal.

9. Oppose or defend a trade mark

Use the TM7 to oppose a trade mark or the TM8 to defend a trade mark. If you intend to oppose a trade mark, you can first submit a TM7A to give the applicant notice of your intention to oppose.

10. Ongoing opposition procedure

Use these forms if required during opposition procedures. For example, you can request a cooling off period if both parties wish to seek a negotiated settlement before a defence is filed.

11. Invalidation or revocation

Use these forms if you want to start invalidation proceedings or apply for a trade mark to be revoked. For example, the trade mark owner may not have used goods or services for a trade mark that they stated they would. Use the TM8N to defend against a revocation based on non-use, and the TM8 to defend against all other types of revocation and invalidation.

12. Withdraw or surrender a trade mark

If your trade mark is not yet registered, you will need to withdraw. If your trade mark is already registered, you will need to surrender your trade mark.

13. Record, amend or cancel a security license

Use these forms if you want to record, amend or cancel a security or license.

14. Request to merge or divide a trade mark

Use these forms if you want to merge or divide a trade mark.

15. Collective or certification marks

Use these forms for collective or certification marks.

16. Record a concurrent registration or transform a Madrid Protocol Designation

Use these forms to record a concurrent registration or transform a Madrid Protocol Designation.

17. Opt out of holding a comparable trade mark

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Who can Assign a Trademark?

Section 37 of the Trade Marks Act, 1999 states that the person registered as proprietor of trademark in the register of trademarks has the power to assign a trademark and receive consideration for such assignment. Thus, a trademark proprietor can assign a trademark to another person.

Kinds of Trademark Assignment

The different kinds of trademark assignments are as follows:

Complete Assignment  

The trademark proprietor transfers all rights in the trademark to another person, including the right to earn royalties, to further transfer, etc. 

For example: X is the proprietor of brand ‘ABC’. X assigns his trademark ‘ABC’ completely through an agreement to Y. After this, X will not have any rights with respect to the brand ‘ABC’.

Partial Assignment

The trademark proprietor assigns the trademark to another person with respect to only specific services or goods. The transfer of ownership in the trademark is restricted to specific services or products.

For example: X is the proprietor of a brand ‘ABC’ used for sauces and dairy products. X assigns the rights in the brand ‘ABC’ with respect to only dairy products to Y and retains the rights in the brand  ‘ABC’ with respect to sauces.

Assignment with Goodwill of Business  

The trademark proprietor assigns the rights, entitlements and values associated with a trademark to another person. When the trademark is assigned with goodwill, the assignee can use the trademark for any class of goods or services, including the goods or services which were already in use by the assignor. 

For example: X is the proprietor of ‘Sherry’ brand relating to hair products. X assigns the brand ‘Sherry’ to Y with goodwill. Y will be able to use the brand ‘Sherry’ with respect to food products and any other products they manufacture.

Assignment without the Goodwill of Business  

The trademark proprietor assigns to the assignee rights and entitlements in a trademark with respect to the products or services that are not in use. The assignor restricts the transfer of the rights in the trademark in the case of assignment without goodwill. The assignor assigns with the condition that the assignee is not entitled to use the trademark relating to the goods or services already in use by the assignor.

For example: X is the proprietor of a brand ‘Sherry’ that he uses for manufacturing and selling bags. X assigns the brand ‘Sherry’ without goodwill to Y. Y will be able to use the brand ‘Sherry’ for any other product other than bags.

Pre-Requisites for Assignment of Trademark

• The trademark assignment should be in writing.
• The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
• The assignor should have the intent and must consent for the trademark assignment.
• The trademark assignment should be for a proper and adequate consideration (amount).

Trademark Assignment Agreement

The proprietor of a trademark generally assigns it to the assignee through a properly executed trademark assignment agreement. The trademark assignment agreement should be drafted keeping the following points in mind:

• The rights of the trademark should not be detrimentally affected due to the obligations contained in the agreement.
• The decision and requirement regarding whether the assignment is with or without the goodwill of the business must be explicitly mentioned.
• The agreement should show a clear purpose of the transaction/assignment.
• The geographical scope of the location where the assignee possesses the values and rights in the trademark must be mentioned.
• The transfer of the right to collect and sue damages for future and past infringements must be mentioned.
• The agreement should be duly executed, i.e. it must be stamped and notarised as per the applicable Stamp Act.
• The signatures and witnesses must be mentioned.
• The place and date of agreement execution must be mentioned.
• The date and day of the assignment along with the parties to the assignment must be mentioned.
• The agreement should mention whether or not it would be binding on the legal heirs of the assignor and assignee.

Process of Assignment of Trademark

The process of assignment of the trademark in India are as follows:

• The proprietor of the trademark (assignor) assigns his/her rights in the trademark through a trademark assignment agreement to the assignee.
• The assignor or assignee, or both, can make a joint request to register the assignment by filing an application of a trademark assignment in Form TM-P to the register of trademarks.
• Form TM-P must be filed with the registrar of the trademark within six months from the date of the assignment. The application can be filed after six months of assignment, but the fee may vary accordingly.
• The assignment must be advertised in such a manner and within the period directed by the registrar of trademarks.
• The copy of the advertisement and the registrar’s direction should be submitted to the office of the registrar of trademarks.
• Upon the receipt of the trademark assignment application (form TM-P) and required documents, the registrar of trademarks will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register.

Documents Required for Assignment of Trademark

The following documents must be submitted to the registrar of trademark along with form TM-P:

• Trademark assignment agreement.
• Trademark certificate.
• NOC from the assignor.
• Identification documents of the assignor and assignee.

Restrictions on Assignment of Trademark

The Trademarks Act, 1999 provides the following restrictions on trademark assignment:

Parallel Use Restriction  

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. Thus, multiple exclusive rights relating to the same/similar products or services in different persons are not allowed. It prevents the parallel use of a trademark by more than one person in relation to the same/similar products or services.

Multiple Territorial Use Restriction  

The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services. The assignor cannot assign a trademark when the assignment results in the creation of an exclusive right in different persons in various parts of India relating to the same/similar products or services sold or delivered outside India. Thus, assigning rights in different parts of India relating to the same/similar products or services is not allowed.

Benefits of Trademark Assignment

• The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
• The assignee obtains the rights of an already established brand due to trademark assignment.
• The trademark assignment supports the assignor and the assignee to expand their respective businesses.
• The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

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Assignment and Licensing of Trademarks

• Post author: [email protected]
• Post published: 14/01/2023
• Post category: Intellectual Property Rights
• Post comments: 0 Comments

Introduction to Assignment and Licensing of Trademarks

Understanding the process of assignment and licensing of trademarks in India is a paramount issue. The process of marketing and strategic management would surely open a plethora of broadening horizons in this domain, for the licensor and licensee likewise. It all depends upon the development of a brand, and the use of the brand, which collectively form a factor to boost marketing in various sectors.

The Trademarks Act of 1999 was updated to reflect modern business processes and do away with unfair brand rivalry. The Act is intended to protect the rights of a proprietor who devotes time, effort, and money to his trademark and to establishing its reputation in the market. The Act also aims to protect consumers from being duped into purchasing a product of inferior quality simply because it bears the same mark as the proprietor’s or an authorised user’s mark, or a mark that is confusingly similar to the proprietor’s mark.

A registered owner may assign or licence the use of his trademark in accordance with the Act. The goodwill of the involved business may or may not be used in the assignment and licencing. It is not necessary to register a trademark in order to assign or licence it.

Every owner of a brand or trademark has the right of selling, transfering, assignment and licensing of trademarks, etc. their respective brand or trademarkin line with legal procedures, much like in the case of tangible property like land. An owner of a brand or trademark may assign or licence his or her rights in relation to that trademark. The Trade Marks Act, 1999 in India covers both trademark licencing and trademark assignment.

Assignment and Licensing of trademarks helps the proprietor to generate more revenue, enact broader and easier territorial expansion, enjoy protection from illegal use of one’s marks, develop easy advertisement across different places, increase consumer recognition and popularity among other benefits.

What is Assignment of a Trademark?

Meaning of Assignment of a Trademark : – Assignment of a trademark means  to transfer the owner’s right in a trademark to another person . The transferring party is called the assignor, and the receiving party is called the assignee. A written assignment made by the parties involved is what the Trade Marks Act of 1999 defines as “ assignment ” under Section 2(b).

Basically, Transferring ownership rights to another person is known as assignment . Ownership rights to a select number of goods or services, or to all the goods or services that the proprietor has registered, may be assigned, unless there is an accompanying trade mark. If they work in various nations, it might potentially benefit more than one person.

Thus, where legal rights are transferred, an assignment should be made in writing; however, a trademark cannot be assigned or transmitted if doing so would give rise to several owners having competing rights, as doing so would mislead or confuse the general public.

Who can Assign a Trademark?

Section 37 of the Trademark Act of 1999 defines the phrase “trademark assignment.” According to the definition, a trademark assignment is giving up ownership of a trademark and a brand mark. According to Section 37 of the Trademarks Act of 1999 , the person listed as the trademark’s proprietor in the register of trademarks has the authority to assign a trademark and receive consideration for such assignment for doing so. So, the owner of a trademark has the option to transfer ownership to another party.

What are the different kinds of Trademark Assignment ?

The different kinds of trademark assignments are as follows : –

• Complete Assignment : – The owner of the trademark assigns all rights in the trademark to a new owner, including the ability to receive royalties and make additional transfers. For instance, X is the owner of the brand “ABC.” By way of a contract, X totally transfers to Y his trademark “ABC.” After that, X will not have any legal claim to the “ABC” brand.
• Partial Assignment : – Regarding only particular services or items, the trademark owner assigns the trademark to a different party with respect to only specific services or goods. The sale of the trademark’s ownership is limited to certain services or goods. For instance, X is the owner of the sauce and dairy product brand ABC. X transfers to Y the rights to the brand “ABC” regarding exclusively dairy goods while keeping the rights regarding sauces.
• Assignment with Goodwill of Business : – The owner of a trademark transfers to another person the privileges, rights, values, entitlements and values associated with a trademark. Here, the absolute ownership over the rights and value of a trademark associated with the product is transferred from one entity to another. When a trademark is assigned along with goodwill, the assignee is permitted to use it for any category of products or services, including those that the assignor was already using. For instance, X is the owner of the “Sherry” hair product brand. X assigns the goodwill of the “Sherry” brand to Y. Y will be permitted to use the “Sherry” name in relation to food goods and any other products they produce.
• Assignment without the Goodwill of Business : – The trademark owner assigns to the assignee all rights and entitlements in the trademark regarding goods or services that are not in use. The assignment without goodwill is also known as “gross assignment”. In the event of an assignment without goodwill, the assignor places restrictions on the transfer of trademark rights. The assignor transfers the trademark with the caveat that the assignee is not permitted to use it in connection with any products or services that the assignor is currently using. For instance, “A” is the owner of a brand and uses his trademark for selling computers. “A” sells his brand to “B” such that “B” will have no rights to use the brand trademark for selling his computer products. However, “B” can use the brand trademark in the chain of businesses other than a computer.

Pre-Requisites for Assignment of Trademark

The pre-requisites for assignment of a trademark are as follows : –

• The trademark assignment should be in writing.
• The assignment should be between two identifying parties, i.e. assignor (owner of the trademark) and the assignee (buyer of the trademark).
• The assignor should have the intent and must consent for the trademark assignment.
• The trademark assignment should be for a proper and adequate consideration (amount).

Assignment Agreement of Trademark

Through a properly drafted trademark assignment agreement, the owner of a trademark often assigns it to the assignee.

The following considerations should be taken when drafting the trademark assignment agreement : –

• The duties outlined in the agreement should not adversely affect the trademark’s rights.
• The choice and requirement of whether the business’s goodwill is included in the assignment or not must be made plainly known.
• The aim of the transaction or assignment should be made explicit in the agreement.
• It is necessary to specify the geographic area in which the assignee has the values and rights to the trademark.
• It is necessary to notice the transfer of the ability to claim damages and file lawsuits for current and previous infractions.
• The contract must be properly executed, which means it must be notarized and stamped in accordance with the relevant Stamp Act.
• It is necessary to mention the witnesses and signatures.
• It is necessary to state the location and date of agreement execution.
• The assignment’s day and date, as well as the parties involved, must be noted.
• The agreement should specify whether or not the legal successors of the assignor and assignee are subject to its obligations.

What is the process of Assignment of Trademark?

The following steps are included in the trademark assignment process in India : –

• Through a trademark assignment agreement, the trademark owner (assignor) transfers his or her ownership of the mark to the assignee;
• By submitting an application of a trademark assignment in Form TM-P to the register of trademarks, the assignor, assignee, or both, may make a combined request to register the assignment;
• Within six months of the assignment date, Form TM-P must be submitted to the trademark registrar. After six months of assignment, the application can be submitted, however the fee may change appropriately;
• The assignment must be publicised in the manner and for the duration specified by the trademark registrar;
• The trademark registrar’s office should receive a copy of the advertisement and the registrar’s instructions; and
• The trademark registrar will register the assignee as the proprietor of the trademark and record the specifications of the assignment in the register upon receipt of the trademark assignment application (form TM-P) and necessary documents;

Documents Required for Assignment of Trademark

Along with form TM-P, the following papers must be delivered to the trademark registrar : –

• Agreement for a trademark assignment;
• Certificate for a trademark;
• The assignor’s NOC; and
• Documentation proving the assignor’s and assignee’s identities.

What are the restrictions on Assignment of Trademark?

According to the Trademarks Act of 1999, trademark assignment is subject to the following limitations : –

• Restriction on Parallel Use : – When a trademark assignment leads in the formation of exclusive rights in various people in respect to the same or comparable goods or services, and it is likely to mislead or cause confusion, the assignor is not permitted to assign the trademark. Multiple exclusive rights pertaining to the same/similar items or services in the hands of various people are therefore not permitted. It forbids several parties from using a trademark in connection with identical or similar goods or services in a simultaneous manner.
• Restriction on Multiple Territorial Use : – When a trademark assignment leads in the development of an exclusive right for several individuals in different regions of India in relation to the same or similar goods or services, the assignor is not permitted to assign the trademark. When an assignment leads in the development of an exclusive right in multiple individuals throughout India for the same or comparable goods or services that are sold or provided outside of India, the assignor is not permitted to assign the trademark. As a result, it is prohibited to grant rights to same or similar goods or services in various parts of India.

What are the benefits of Assignment of Trademark?

The benefits of Trademark Assignment are as follows : –

• The trademark assignment enables the trademark proprietor to encash the value of his/her brand.
• The assignee obtains the rights of an already established brand due to trademark assignment.
• The trademark assignment supports the assignor and the assignee to expand their respective businesses.
• The trademark assignment agreement enables the assignor and the assignee to establish their legal rights in case of any dispute.

What is Licensing of Trademarks?

Meaning of Licensing of Trademarks : – Licensing of Trademarks simply means the permission granted by the owner of the trademark to a third person. Such a license is granted in consideration of a Royalty. For Example: – Where an owner of a brand authorizes and allows a third party to use its brand/mark in the course of trade for goods/services. The most important thing to remember is that ‘licensing’ is not sale of the mark or absolute transfer . The ownership to the mark is retained by the owner/holder and only a limited right to use, sell products under the mark etc are given to the third party.

Through the process of trademark licencing, a registered trademark owner authorises a third party to use the trademark or logo without giving up ownership of the mark . Simply said, trademark licencing enables the registered owner to permit other parties to use the trademark or brand name without transferring ownership of the trademark. The conditions of the Trademark Licensing Agreement allow the trademark owner to impose additional limitations on the use of a registered trademark. For the agreed-upon commercial uses of the registered trademark, the registered trademark owner may receive royalties from the licensee.

It should be emphasised that only a limited number of rights relating to a registered trademark are granted to the licensee, and that the registered trademark owner retains sole ownership of the licenced trademark as well as all other relevant rights.

The licencing of service marks and trademarks in India is covered by Section 49 of the Trademark Act, 1999 . Trademark licencing typically depends on some agreed-upon terms and circumstances relating to the proposed product’s quality level, the preservation of the established status of the product and Trademark, exclusivity for the same, the various ways the Trademark may be used, etc. An agreed-upon period is used for trademark licencing. There are no specified legal conditions or time limits for trademark licencing in India according to the Indian Trademarks Act.

Who can grant a Trademark License?

The trademark licence can only be given by the registered trademark’s owner or holder . It would be appropriate to mention that both registered and unregistered property can be transferred under Indian law. A trade mark may be transferred by an assignment or a licence.

In India, there are two types of licences for trademarks that are registered: a simple licence agreement that pertains to permissive use and a registered user, where the licence agreement is registered with the Registrar of trademark. The licensee is granted specific legal rights under this licence.

Why is a Trademark License Granted?

To formally allow a third party to utilise the registered brand, a trademark licence is provided. It is typical for foreign businesses, particularly IT businesses, to offer trademark Licenses in other nations so that their trademarks can be used there. For instance, a brand owner may authorise another individual to use his trademark in connection with goods and services during commerce.

The Trademark License is not being sold; it is being granted. Licencing simply gives the right to use it.

A person other than the registered proprietor of a trademark may be registered as a registered user, according to statutory language in Section 48 of the Trademark Act. Therefore, the rules of this act may permit the use of a registered trademark, but only if both parties comply with the relevant requirements.

Process for Registration of a Trademark License

A Registered User is currently registered under Section 49 of the Trademarks Act of 1999. In this case, the Licensee is the Registered User.

Permitted use of a trademark is defined under Section 2(1)(r) of the Trademarks Act. It refers to the following :

• With which he is connected during trade;
• In respect of which in the trademark remains registered for the time being;
• For which he is registered as a registered user;
• Which complies with any conditions or limitation to which the registration of the registered user is subject;
• In respect of which the trademark remains registered for the time being;
• By consent of such registered proprietor in a written agreement; and
• Which complies with any conditions or limitation to which such user is subject and to which the registration of the trademark is subject”.

The registration of a trademark license agreement is not mandatory under the law. But registration always comes to the rescue as it forms a record/ evidence in possible future disputes.  In the case of  Himalaya Drug Co. Pvt. Ltd., Bangalore vs. Arya Aushadhi Pharmaceutical Works, Indore , AIR 1999 MP 110  the Court ruled that if a company fails to prove that it is a registered user then the suit is liable to be dismissed. It is therefore always good to register the Trademark License with the Trademark Office. Only a Registered owner/ Proprietor of the Trade Mark is competent to launch proceedings for the trademark infringement as per the Trademarks Act, 1999. If a User is not registered under the act then he cannot maintain the suit under the Act.

Therefore, to register the trademark license : –

• The agreement must be in writing;
• The trademark owner and the intended user should apply for registration (section 49) with the Trademark Registrar jointly;
• The form to use for the application is TM-U;
• Relationship between the parties
• Duration of the use
• Goods/services for which it is applicable
• The government fee of Rs. 4500 for each mark shall be paid.

According to the Act’s provisions, a registered user may be granted permission to use a registered trademark, but in order to do so, the registered owner of the Trade Mark must enter into a contract with the prospective registered user.

Within six months of the date the parties’ agreement was formed, an application for registration must be submitted. If everything is acceptable, the Trademark Office (TMO) will subsequently register the user. Following that, the user will be a “Registered User” of the trademark.

The Trademark Office will notify the trademark owner and any other registered users of the same trademark and publish it in the Journal.

What are the benefits of a Trademark License?

The benefits of Licensing of a Trademark : –

• Financial Gain : – The trademark is widely used for commercial gain, and the owner receives royalties as a result. This financial gain benefits both parties. By granting the licence to the licensee, the licensor, who previously could not capitalise on his trademark due to lack of resources or exposure, can now use those resources to his advantage and benefit more. A portion of the income are also given to the licensee.
• Expansion of the Trademark Owner’s Business : – The Trademark owner’s business grows and expands its reach into new regions. Since the licensee(s) can leverage their distribution abilities for business expansion, the company is no longer restricted to a specific geographic area.
• Expanding the Brand Recognition of a Trademark : – The Trademark becomes well-known in areas where it was previously unknown. The licensee is allowed to widely publicise using his resources.
• Increase in Trademark Popularity : – As the Trademark is recognised to more individuals and consumers, it gains popularity. By boosting sales, this increases revenue and facilitates the trademark’s continued licencing.
• Workload Redistribution/Reduction : – In a sense, the Licensee joins the Licensor as a partner. Because the licensee is equally responsible for upholding the quality of the goods, he produces using the trademark, the licensee’s workload is lessened and he need not worry about the quality of the products.

Under what conditions can a Trademark License be cancelled?

Cancellation is possible in the following situations : –

• If the provisions of the agreement are broken or violated;
• If the mark is used in a manner not permitted under the agreement;
• If the mark is utilised to trick consumers or the public by creating confusion;
• If any party withholds information that is important and necessary to the agreement;
• If one of the parties makes false statements or cheats.

The Trademark Office notifies the Trademark owner as well as any additional registered users who might be impacted by the cancellation of the Trademark License. The official cancellation cost is Rs. 4500 for each mark.

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Main → Services → Trademark registration

Trademark Registration in Russia

Trademarks are registered by the Russian Federal service for intellectual property (Rospatent) (hereafter – “the Russian Trademark Office”) as per requirements and procedure set by the Civil Code of the Russian Federation and Rules of drawing, filing and consideration of trademark and service mark applications. The following documents shall be provided to the Russian Trademark Office for trademark registration:

• a trademark application. Please note only legal persons and physical persons conducting entrepreneurial activity can be trademark owners. We draw and file one on behalf of the applicant;
• a document confirming payment of state duty for filling of the trademark application. We pay such a duty acting as trademark attorneys;
• a power of attorney authorizing a trademark attorney to act on behalf of an applicant. Draft form of POA is provided by us at no cost.

The state duties for filing trademark application and examination of  the claimed designation are 10500 Russian rubles for one class application (roughly USD 175) and 1750 Russian rubles (roughly USD 30) for each additional class of the Nice Classification. Trademark attorney fee for one application is USD 100-150. After submitting trademark application to the Russian Trademark Office examination of trademark is carried out. Results of examination are reported to the applicant in the form of resolution on trademark registration. Registration procedure takes about 8 months from the day of submitting the application for the registration of a trademark to the Russian Trademark Office to obtaining Trademark Certificate. In the course of registration procedure foreign applicants shall be represented by patent (trademark) attorney admitted in the Russian Federation. The following documents, information and materials shall be provided for trademark registration:

• a power of attorney authorizing a patent attorney to act on behalf of an applicant;
• a print of trademark;
• a list of goods and services to be covered by a trademark (grouped according to the Nice Classification)
• a name of an applicant (in accordance with the foundation documents of a company);
• a legal address of an applicant (in accordance with the foundation documents of a company);
• contact details of an applicant.

We are ready to provide you a complex service regarding trademark registration in the CIS (Kazakhstan, etc.), the Ukraine and other states of the former USSR.  Additional Services Pertinent to the Trademark Registration The Russian Trademark Office provides the following services pertinent to trademark search:  search of registered designations and  designations applied for registration that are identical and similar to a  designations (verbal mark) specified by an applicant for classes of Nice Classification specified by the applicant. The Russian Trademark Office issues a listing of verbal elements of trademarks with registration numbers of relevant documents;  search of trademarks and  designations registered and applied for registration that are identical and similar to a graphic or device designations provided by an applicant for classes of Nice Classification specified by the applicant. The Russian Trademark Office issues a report containing reproduction of a mark, information on a right holder (applicant) and its location.

Updated 19.07.2019.

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