Why does a Trademark Assignment Need to be Notarized?

Last Updated at: May 06, 2020
174
Why does a Trademark Assignment Need to be Notarized_

 

  1. What is a Trademark Assignment?

  2. Types of Trademark Assignment

  3. Benefits of Trademark Assignment

  4. What are the documents required for Trademark registration?

  5. What are the elements of the Trademark Assignment?

  6. Notarization of the Trademark Assignment

  7. FAQs

A company has complete right on its trademarks, and it can sell, license, and transfer its Trademark. There is a defined procedure for the transfer or selling of Trademark. There are two ways by which the Trademark is transferred:

  1.   Assignment
  2.   Licensing

After the trademark assignment, the receiver becomes the proprietor of the Trademark. Trademark Act, 1999 deals with trademark assignment and licensing; and in this blog, we will be highlighting trademark assignment and the procedure for the same.

What is a Trademark Assignment?

It is a written document that helps in transferring the Trademark (recognized phrase, word, design, or symbol) from the original owner to another. The original owner of the Trademark is known as the assignor, and the one who becomes the new owner is called an assignee.

In simple words, we can say that it is the transfer of ownership with or without the goodwill of the business. If it is registered, then, it has to be recorded in the Register of Trademark.

Trademark is important for any organization as it helps a customer recognize the brand and connect with it instantly.

Types of Trademark Assignment

Before going ahead and understanding the process, let us know about the type of trademark assignment:

  1. With goodwill– It promotes the exchange of proprietary rights and brand value of a trademark. The person who takes the Trademark can use the brand’s market reputation to increase sales.
  2. Without Goodwill– The assignee doesn’t get to use the brand value.

Learn how to secure your business

Benefits of Trademark Assignment:

Valid proof- Additionally, in case of dispute, one can prove his/her legal rights easily with the help of the trademark assignment deed.

Security – under the trademark assignment, the agreement will be executed by both the parties. This assignment acts as a valid proof and is admissible in court, in case the dispute arises between the two parties. Additionally, the assigned Trademark is also published in the trademark journal. In case of dispute, the registrar scrutinizes all the clauses.

Market Value- Trademark is of great value. Moreover, it showcases the uniqueness of the brand and also establishes an instant connection with it. Additionally, if someone buys a pre-recognized trademark, then they get the benefit of the name of that brand.

What are the documents required for trademark registration?

  1.  Trademark registration certificate
  2.  Name and details of the assignor and assignee
  3.  No objection  certificate from the original owner
  4.  Copy of the logo
  5.  Form-48
  6.  ID proof of proprietor
  7.  Address of the properties

What are the elements of the Trademark Assignment?

  1.   Date of transfer of Trademark
  2.   Transformation of Trademark
  3.   Name and details of assignor or assignee
  4.   Remuneration paid for the transfer of Trademark
  5.   Warranties regarding ownership of the Trademark
  6.   Signature of both assignor and assignee
  7.   Notary public to notarize the Trademark

Notarization of the Trademark Assignment

The assignment must be notarized on the stamp paper of the right value. If you are planning to operate your company with a foreign company, then you would understand that notarization is important. Also, note that it must be stamped in India.

This is important so that you face no litigation pending. Moreover, at the time of transfer, the assignor submits an affidavit which is notarized mentioning that the Trademark is truly theirs. Furthermore, this move has been taken to make it easy to prove that there is no pending litigation. Moreover, that’s why the notarization of Trademarks is important.

Process of Trademark Assignment

  1. The assignee must apply in the designated manner for trademark assignment
  2. Additionally, assignee or assignee or both must issue Form ™-P
  3. This form will make the assignee a subsequent proprietor
  4. Apply with the register of Trademark, six months before the date of proprietorship
  5. The form can be filled later, but the fees must be paid on time
  6. The regulation for the assignment of trademark assignment must come six months before the date of assignment
  7. Moreover, the assignee must advertise the assignment
  8. Similarly, send a copy of the application along with the advertisement to the registrar office
  9. The registrar will finally make the assignee a proprietor of the Trademark

 FAQs

  1. Who can apply for a Trademark?

If you want to go for trademark registration, then you need to make an application for the same. If the user wants to use the Trademark in prior, then they need to submit an affidavit along with proof to support their claim. In India, the trademark registry works from five locations Delhi, Mumbai, Ahmedabad, Kolkata, and Chennai.

  1. Is it necessary to go for registration of Trademarks?

No, it is not compulsory. But, registration is evidence of the proprietorship of the Trademark under registration. In the case of unregistered marks, actions can be brought for passing products or services as the good of another person. So, to save yourself from litigation, the best way is to go trademark registration.

  1. What are the formalities and government feed for trademark transactions?

One has to fill the following forms:

TM-1

TM-2

TM-3

TM-8

TM-51, etc.

Fees:

  1.   Renewal of Registered Trademark- INR 5000/-
  2.   Surcharge for belated renewal of Trademark- INR 3000/-
  3.   Restoration of the removed mark- INR- 5000/-
  4.   Rectification of a registered trademark- INR 3000/-
  5.   Legal certificate – INR 500/-
  6.   Copyright search requires and issuing the certificate- INR 5000/-

 

 

 

0

Why does a Trademark Assignment Need to be Notarized?

174

 

  1. What is a Trademark Assignment?

  2. Types of Trademark Assignment

  3. Benefits of Trademark Assignment

  4. What are the documents required for Trademark registration?

  5. What are the elements of the Trademark Assignment?

  6. Notarization of the Trademark Assignment

  7. FAQs

A company has complete right on its trademarks, and it can sell, license, and transfer its Trademark. There is a defined procedure for the transfer or selling of Trademark. There are two ways by which the Trademark is transferred:

  1.   Assignment
  2.   Licensing

After the trademark assignment, the receiver becomes the proprietor of the Trademark. Trademark Act, 1999 deals with trademark assignment and licensing; and in this blog, we will be highlighting trademark assignment and the procedure for the same.

What is a Trademark Assignment?

It is a written document that helps in transferring the Trademark (recognized phrase, word, design, or symbol) from the original owner to another. The original owner of the Trademark is known as the assignor, and the one who becomes the new owner is called an assignee.

In simple words, we can say that it is the transfer of ownership with or without the goodwill of the business. If it is registered, then, it has to be recorded in the Register of Trademark.

Trademark is important for any organization as it helps a customer recognize the brand and connect with it instantly.

Types of Trademark Assignment

Before going ahead and understanding the process, let us know about the type of trademark assignment:

  1. With goodwill– It promotes the exchange of proprietary rights and brand value of a trademark. The person who takes the Trademark can use the brand’s market reputation to increase sales.
  2. Without Goodwill– The assignee doesn’t get to use the brand value.

Learn how to secure your business

Benefits of Trademark Assignment:

Valid proof- Additionally, in case of dispute, one can prove his/her legal rights easily with the help of the trademark assignment deed.

Security – under the trademark assignment, the agreement will be executed by both the parties. This assignment acts as a valid proof and is admissible in court, in case the dispute arises between the two parties. Additionally, the assigned Trademark is also published in the trademark journal. In case of dispute, the registrar scrutinizes all the clauses.

Market Value- Trademark is of great value. Moreover, it showcases the uniqueness of the brand and also establishes an instant connection with it. Additionally, if someone buys a pre-recognized trademark, then they get the benefit of the name of that brand.

What are the documents required for trademark registration?

  1.  Trademark registration certificate
  2.  Name and details of the assignor and assignee
  3.  No objection  certificate from the original owner
  4.  Copy of the logo
  5.  Form-48
  6.  ID proof of proprietor
  7.  Address of the properties

What are the elements of the Trademark Assignment?

  1.   Date of transfer of Trademark
  2.   Transformation of Trademark
  3.   Name and details of assignor or assignee
  4.   Remuneration paid for the transfer of Trademark
  5.   Warranties regarding ownership of the Trademark
  6.   Signature of both assignor and assignee
  7.   Notary public to notarize the Trademark

Notarization of the Trademark Assignment

The assignment must be notarized on the stamp paper of the right value. If you are planning to operate your company with a foreign company, then you would understand that notarization is important. Also, note that it must be stamped in India.

This is important so that you face no litigation pending. Moreover, at the time of transfer, the assignor submits an affidavit which is notarized mentioning that the Trademark is truly theirs. Furthermore, this move has been taken to make it easy to prove that there is no pending litigation. Moreover, that’s why the notarization of Trademarks is important.

Process of Trademark Assignment

  1. The assignee must apply in the designated manner for trademark assignment
  2. Additionally, assignee or assignee or both must issue Form ™-P
  3. This form will make the assignee a subsequent proprietor
  4. Apply with the register of Trademark, six months before the date of proprietorship
  5. The form can be filled later, but the fees must be paid on time
  6. The regulation for the assignment of trademark assignment must come six months before the date of assignment
  7. Moreover, the assignee must advertise the assignment
  8. Similarly, send a copy of the application along with the advertisement to the registrar office
  9. The registrar will finally make the assignee a proprietor of the Trademark

 FAQs

  1. Who can apply for a Trademark?

If you want to go for trademark registration, then you need to make an application for the same. If the user wants to use the Trademark in prior, then they need to submit an affidavit along with proof to support their claim. In India, the trademark registry works from five locations Delhi, Mumbai, Ahmedabad, Kolkata, and Chennai.

  1. Is it necessary to go for registration of Trademarks?

No, it is not compulsory. But, registration is evidence of the proprietorship of the Trademark under registration. In the case of unregistered marks, actions can be brought for passing products or services as the good of another person. So, to save yourself from litigation, the best way is to go trademark registration.

  1. What are the formalities and government feed for trademark transactions?

One has to fill the following forms:

TM-1

TM-2

TM-3

TM-8

TM-51, etc.

Fees:

  1.   Renewal of Registered Trademark- INR 5000/-
  2.   Surcharge for belated renewal of Trademark- INR 3000/-
  3.   Restoration of the removed mark- INR- 5000/-
  4.   Rectification of a registered trademark- INR 3000/-
  5.   Legal certificate – INR 500/-
  6.   Copyright search requires and issuing the certificate- INR 5000/-

 

 

 

0

FAQs

No FAQs found

Add a Question


No Record Found
SHARE