Generally people refer to the process of trademark registration as brand name registration. The reason being that brand names are a type of trademark. As we know, a trademark is a unique mark. All unique marks, that the owner uses furtherance of their trade, are ‘Trademarks’. It can be a brand name, a logo, any tagline/slogan, packaging material, shape or scent, etc. Hence, any distinctive mark you use for your business can fall under brand name registration in India.
What is Trademark Assignment in Brand Name Registration?
All business owners, even small businesses opt for Brand Name Registration. The reason behind this is the many benefits that come with having a registered trademark. One of the most important benefits of registering a trademark is you, as an owner, get the right to the exclusive usage of your trademark. The exclusive right protects your mark from infringement. However, what happens in certain situations when you need to transfer the ownership in part or whole of your rights to someone else? That’s when Trademark Assignment comes into the picture!
Trademark Assignment is the process of assigning ownership over a trademark in exchange for consideration. You can apply for Trademark assignment before or after the completion of the brand name registration process.
Process of Trademark Assignment
As per the provisions of the Trademarks Act, 1999 (the Act) the original owner of a trademark can transfer his ownership of the trademark to any other person or entity. You can apply for the assignment of brand name registration in two modes:
- After completion of Registration; or
- When the application is pending.
The process remains the same, which is as follows:
Prepare Deed of Assignment –
In simple terms, trademark assignment is the actual transfer of ownership of the mark. Besides, it is a salient feature of a trademark that forms part of an intangible asset. Keeping that in mind, a sale deed is necessary whenever any sort of transfer of ownership takes place. The Trademark Assignment deed sort of plays the part of being a sale deed. In a trademark assignment deed, you can mention all the rules and provisions leading up to the assignment. The following details:
- The extent of transfer of ownership (part or whole);
- Roles and responsibilities of the transferor and transferee;
- Whether the transfer of ownership includes the transfer of goodwill or not;
- The amount of consideration (if any);
- Mode of transfer of consideration amount; etc.
You need to submit this deed of assignment and all other documents, as fully executed by both parties, i.e., The transferor and transferee
Other documents required for Trademark Assignment
Apart from the deed of assignment, there are several other documents that the assignor and assignees are need to submit. Namely:
- An Affidavit – duly executed by the assignor; claiming his right in the mark and providing accurate details of the mark such as the class, and any pending litigations etc.
- A no objection certificate – signed by the assignor, stating he does not object to the registration of the mark; and
- Power of Attorney – only applicable if either of the parties has hired any agent/trademark attorney to facilitate the assignment procedure; and
- Proof of Consideration – proof, such as the bank transfer image, or an image of a cheque in favor of the assignor to show the transfer.
Submit form TM-P
To make an application for assignment after brand name registration, you need to submit the form TM – P with the prescribed fees of Rs. 9000/- to the Trademark Registry. In this form, you need to provide the following details of the assignee –
- Name of the assignee;
- Contact details such as number, email ID, registered office address, etc.
- A list of documents as ‘Annexure’ and lastly;
- Certificate of Registration.
After filing these details, you need to make the government fees and thereafter, your assignment will be in process.
Timeline for Trademark Assignment
Once you apply for an assignment after brand name registration, the registry assigns an officer to check if the application fulfills all requirements or not. This entire examination process can last up to a year before any notice is received from the end of trademarks office. Then, a notice is issued, where the registry acknowledges the receipt of the assignment request. Here, the notice can include the following:
- If any discrepancy is found, which hampers the assignment – the officer will state it, and you will have to reply to the discrepancy; or
- If there is no discrepancy – the officer will give a one-month buffer to third parties to object to this assignment.
Then, within one month of issuance of this notice, the assignment will be reflected on the IPIndia Portal. Assignment of trademarks sometimes takes even longer than the actual registration process. Hence, you should ensure that while drafting the deed or submitting the form, utmost care is taken.
The entire process related to trademarks be it brand name registration, assignment, renewal, etc. can be completed online. This has made trademarks accessible to all. If you are looking to get Trademark Assignment in India online, you need to ensure that you follow each of the above-mentioned steps carefully.