In this blog, we will learn about the process of assignment of trademark in India and IP India trademark search
Trademark is an intellectual property. According to the Section 2 (zb) of the Trademark Act, 1999, “trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours. So basically, trademarks are some artistic symbols, words, phrases, or a combination thereof, which are used to identify and distinguish certain goods or sources of services from the other similar goods or services available in the market. These symbols or logos represent a company or products.
Every trademark owner has the right to sell, license, assign and/or transmit its assets and its rights with respect to the said asset. A trademark can be transferred just like any other physical property. This transfer of Trademark is known as the Assignment of Trademark. Assignment of Trademark means the transfer of Owner’s right, title, interest, and benefits to other person. The person who transfers is called as the “Assignor,” and the one who receives is called as the “Assignee”.
ASSIGNMENT OF TRADEMARK:
The Assignment of Trademark takes place when there is a transfer of ownership of the said Trademark from one party to another. In India, for the purpose of the Assignment of Trademark, such Assignment should be registered, and the registered Trademark is required to be recorded in the register by filing the Form TM-P, i.e., an application for post-registration changes in the registered trademarks. In case of any unregistered trademark, all assignments should be registered either on Form 23 or Form 24 before the Registrar of the Trademarks.
Assignment of a trademark is done by way of properly executing the Trademark Assignment Agreement, which signifies the transfer of the said Trademark from one person or owner or entity to another person or owner or entity.
WAYS IN WHICH THE ASSIGNMENT AGREEMENTS CAN BE EXECUTED:
Assignment agreements can be executed in the following ways-
Complete Assignment to other entity.
Assignment with goodwill.
An assignment without goodwill.
PROCEDURE OF ASSIGNMENT OF TRADEMARK:
The step-by-step procedure for the Assignment of Trademark is as follows-
The very first step is to submit an application for the transfer or the Assignment of the trademark, either by the assignee or the assignor or by both. The application shall contain all the information regarding the transfer and the need to be filed under Form TM-P, as is shown under Rule 75 of the Trademark Rules, 2017.
As soon as the application is made, the same will be filed with the Registrar of the Trademark. This must be done within 3 months from the date of acquisition of the right of ownership of the said Trademark.
In the event of a transfer of a trademark with goodwill or registered Trademark, the direction from the Registrar is compulsory, and this should be done before the stipulated period of 3 months ends.
After getting approval from the Registrar, the applicant will make the advertisement of the Assignment of the Trademark accordingly. Advertising specimen, along with a copy of the Registrar’s approval for the Registration, should be submitted.
Once the Registrar is satisfied with all the documents he has signed, the Trademark will be transferred from the original to the new owner.
The name of the assignee, that is, the new owner, must be registered in the public register as the new owner. After which, the assignee can use the Trademark in accordance with the terms and conditions of the said assignment agreement.
The creation of exclusive rights in more than 1 person with the same or similar goods or services is restricted because it will create confusion among the people.
The Assignment of different people to use the said trademarks in different parts of the country is restricted.
The Assignment provided to different people using the Trademark in different parts of the country is also forbidden.
DOCUMENTS NEEDS TO BE ENCLOSED WITH THE APPLICATION OF TRADEMARK ASSIGNMENT AGREEMENTS:
A Certificate of Trademark Registration or other applications, including the domain names. In case when the domain name has not been registered as a trademark, a copy of the receipt which indicates the proof of ownership of the Trademark.
An acknowledgment slip from the assignor for receipt of consideration from the assignee for the Assignment of Trademark, which is duly signed, stamped, and/or notarized.
A NOC (No Objection Certificate) is taken from the assignor, which is properly stamped and notarized.
A NOC (No Objection Certificate) from the assignee which is properly stamped and notarized.
When one of the parties involved is a Company, in that case, a Board Resolution on Company’s letterhead should be provided approving the said assignment agreement and authorizing any representative to deal with the said trademark assignment.
If the Trademark is registered, Form TM-P should be filed along with Nine Thousand Rupees as fees for each Trademark, if filed online. If filed offline, the fee will be around Ten Thousand Rupees.
If the Trademark is a registered one, a Power of Attorney (POA) should be provided to authorize the Trademark Agent or Attorney to file the subsequent proprietor by way of Assignment and must be filed along with Nine Hundred Rupees for each Trademark if filed online. If filed offline, the amount will be One Hundred Rupees for each Trademark.
If the registration is due, Form TM-M is filed for correction of clerical error or for any other function under Rule 37 of the Trade Marks Rules, 2000 must be filed along with fees Nine Hundred Rupees of each pending Trademark if filed online, and if filed offline the amount will be One Hundred Rupees for each Trademark.
If the Trademark is pending registration, Power of Attorney (POA) in Form TM-M is filed to authorize a Trademark Agent or Attorney representing the assignee.
IMPORTANT ASPECTS TO CONSIDER WHILE DRAFTING AN EFFECTIVE ASSIGNMENT AGREEMENT:
To make the assignment agreement effective, the following things should be kept in mind-
The Assignment mentioned therein must not cause any infringement upon the rights of the owner. It is a part of their obligations.
It should expressly mention whether the Assignment is with or without goodwill in the process.
The drafting of the said Agreement should clearly state the purpose of the transaction. The provisions of such agreements should be consistent with the stated purpose.
It is necessary to clearly mention the geographical coverage in the locations in which the rights and the value of the Trademark will be gained by the assignee.
In case the said Trademark being assigned contains the name of any person, whether living or deceased, a written consent from such person or their representative must be obtained.
It should also be noted that the transfer of the right to sue and collect damages for past and future infringements should be stated.
MANDATORY REQUIREMENTS AS TO FORM AND CONTENT:
The said assignment agreement should be in written format. Oral transmission is not yet recognized in India.
The Agreement must clearly mention the parties involved, i.e., the owner or the assignor and the buyer or the assignee.
Like every other Agreement, consideration should be there. There should be a clear indication regarding the nature of the consideration for which the ownership is being transferred for.
The date of the said Assignment should be mentioned clearly, and it is of great importance in terms of preventing any complications in case any disputes arises in the future.
All the relevant applications or registrations which are being transferred should be properly specified rather than casually stating an agreement for the transfer of Trademark in ownership of the assignor.
The said Agreement should be duly executed, i.e., the said Agreement must be properly notarized and stamped as per the Stamp Act.
In the said Agreement, the signatures of the witnesses along with the correct date and place of execution must be clearly stated without any fault.
It should be clearly mentioned whether the said Agreement would be binding on the legal heirs or not.
Any provision regarding the co-operation and assistance to the purchaser or assignee by the transferor or assignor in case of enforcing or taking any kind of legal action in the near future must be duly mentioned and should be agreed upon by both parties. In addition to that, it should also specify that the parties shall bear the costs.
The trademark Registrar may request for the production of an Affidavit on the Form TM-18 for the verification of title along with the proof of title for his own satisfaction.
Under Section 40(2) of the Trademark Act, 1999, a person seeking the approval of the Registrar must make an application under the Form TM-P and should also attach with it the statement of the case, i.e., the background facts of the case and a copy of any instrument or proposed instrument affecting the said Assignment. The Registrar can ask to furnish proof of title or any other evidence. In the case where the statement of the case is amended, three copies of the same in its final Form should be filed with the registry.
FEES FOR ASSIGNMENT OF TRADEMARKS:
In India, if the procedure of trademark assignment is completed within six months from the date of obtaining the proprietorship, the statutory fee will be Five Thousand Rupees.
If the procedure of trademark assignment is completed after the expiry of six months, but prior to twelve months from the date of obtaining proprietorship, the statutory fee will be Seven Thousand Five Hundred Rupees.
If the trademark assignment is completed after the lapse of twelve months from the date of obtaining proprietorship, the statutory fee will be Ten Thousand Rupees.
A trademark search is a kind of directory of the registered trademarks. By doing the trademark search, the following information will come up-
The person who has applied for the same or similar Trademark.
Application number and the date of such application.
The class under which the application for registration was made.
The status of the said application, whether approved or withdrawn or registered or objected and/or abandoned.
To do the IP INDIA TRADEMARK SEARCH, the steps are as follows-
First, the person searching for the Trademark should visit the online portal of the trademark search.
On the website, there are three search criteria available, such as Wordmark, Vienna code, and Phonetic.
On the selection of each criterion, the keyword fields will change.
After which, the person should enter the wordmark of his/her choice to search on the website of the Trademark. A trademark database can be compared against the search query with these three conditions- ‘start with,’ ‘contains,’ and ‘match with.’
The ‘Start with option will display all the entries in the trademark search database that start with the value mentioned for search.
The ‘Contains’ option will display all the entries in the trademark search database that contains all the values provided for search.
And the ‘Match with’ option will display all the entries in the trademark search database, which matches with the value stated for the search.
Next, the class of the Trademark that is applicable should be entered. Trademarks are divided into 45 classes, and each class represents a separate group of goods and services. A registered trademark or trademark application will be applicable to the class under which it is applied for.
Lastly, as a final step, the person will click on the search option to begin the said Trademark search.
A simple IP INDIA TRADEMARK SEARCH will result in a number of matches. Having a proper understanding of the trademark search is necessary for interpreting the implications.
After clicking on the search option, if it shows “no matches found,” then it simply means that there are no registered or applied trademarks that will match the query or search. For the purpose of the registration of the said Trademark, it should not be similar to any other existing trademarks.
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