Why does a trademark assignment need to be notarized?

Last Updated at: April 15, 2020
282
Why does a trademark need to be notarised?

If you run a business or company, then you must know about trademarks and why they are so important. But do you know why a trademark assignment needs to be notarized? It is because it makes a document authentic and trustable. We will discuss this in detail. 

  1. What is a Trademark?

  2. What is a Trademark Assignment?

  3. Benefits of Trademark Assignment

  4. Requirements for Trademark Assignment

Notarization of the Trademark Assignment 

  1. What is the process of the trademark assignment?

  2. Ways to assign a trademark

  3. Documents Required For Trademark Assignment

  4. Types of Trademark Assignment

  5. Elements of Trademark Assignment

What is a Trademark?

A trademark works as a formal business name, logo or umbrella term that includes both your business name and logo. Essentially, this trademark helps customers differentiate between products and services. Furthermore, it also protects your company’s products or services from plagiarism and compromisation. Therefore trademarks work like intellectual property protectors.

What is a Trademark Assignment?

Since trademarks are a form of intellectual property, they may be sold, transferred or licensed the way assets can be shared. Such sharing or transferring of trademarks happens via an Assignment or licensing. There are several variations in ownership of the brand when the trademark is assigned. However, when it is licensed, only a few rights get handed down to third-parties. A majority of the rights still stay with the buyer. It may be done with or without assigning goodwill. If the trademark is registered, then the transfer must be recorded in the Trademark Register.

Benefits of Trademark Assignment

  1. Helps the brand owner unlock the actual value of the brand,
  2. Helps the assignee make use of the brand value of the product or service, rather than creating value for a new brand
  3. Serves as valid proof in case there are any legal disputes regarding the trademark

Requirements for AssignTrademark

  • Pending trademark application
  • Issued trademark registration
  • Business goodwill
  • Associated applications and registrations
  • International applications and registrations
  • Names of related individuals, both living and dead
  • Domain names registered email IDs and social media accounts
  • Execution Requirements
  • Signatories and witnesses
  • Notarization and Legalization
  • Execution date and address 
  • Power of attorney

Register your trademark

Notarization of the Trademark Assignment

The Assignment must be duly notarized and written out or stamped on a stamp paper of the right value or denomination. The notarization is mandatory if the assignee wishes to register the trademark in a foreign country. For instance, if the applicant lives abroad, he or she must notarize the same in their country of residence or country of execution. Even while doing so, care must be taken to see that it is stamped in India.

Furthermore, this move has been taken to make it easy to prove that there is no pending litigation. At the time of transfer, the assignor must submit an affidavit which is notarized stating that the trademark is truly theirs. This is why trademark assignments in India need to be notarized.

What is the process of the assignment?

  1. The assignee must apply for a trademark assignment in the designated manner.
  2. The assignor or assignee must issue Form ™-P either individually or via joint request.
  3. This form will help make the assignee a subsequent proprietor.
  4. Six months from date of proprietorship, apply with the Registrar of Trademark
  5. While the form may be filled and submitted later, the prescribed fees must be duly paid
  6. For assignment of certified trademarks, the regulation must come before six months from the date of assignment 
  7. Assignee must then advertise the assignment 
  8. Send a copy of the application and the advertisement to the registrar office 
  9. The registrar will then make the assignee a proprietor of the trademark 
  10. The trademark will record the specification of the assignment.

Ways to assign a trademark

  • Complete Assignment- All rights related to trademark, including the right to authorities and royalties are attached to a third-party
  • Partial Assignment- Transfer of specific rights or services and the owner retains the right to transfer other rights and earn royalties

Documents Required For Assignment

  • Trademark Registration Certificate
  • Both the assignee and assignor’s name and details
  • NOC from the original owner 

Documents Required For Trademark Registration

  1. Copy of the logo
  2. Self-Attested Form-48
  3. ID proof of proprietor
  4. Address proof of proprietor

Types of Trademark Assignment

  • With Goodwill– Encourages the exchange of proprietary rights and brand value of a trademark. The assignee can utilize the brand’s market reputation to further sales and growth.
  • Without Goodwill– Assignee does not get to utilize the brand value of the assignor. Therefore, customers cannot use the trademark the way the assignor does. Also called a gross trademark task.

Elements of Trademark Assignment

  1. The effective date of transfer
  2. A transformation of a trademark
  3. Name and details of the assignor
  4. Name and details of the assignee
  5. Consideration or remuneration paid for the trademark
  6. Warranties regarding ownership of the trademark
  7. Signatures of both the assignor and assignee 
  8. Notary public to notarise the trademark 

 

 

0

Why does a trademark assignment need to be notarized?

282

If you run a business or company, then you must know about trademarks and why they are so important. But do you know why a trademark assignment needs to be notarized? It is because it makes a document authentic and trustable. We will discuss this in detail. 

  1. What is a Trademark?

  2. What is a Trademark Assignment?

  3. Benefits of Trademark Assignment

  4. Requirements for Trademark Assignment

Notarization of the Trademark Assignment 

  1. What is the process of the trademark assignment?

  2. Ways to assign a trademark

  3. Documents Required For Trademark Assignment

  4. Types of Trademark Assignment

  5. Elements of Trademark Assignment

What is a Trademark?

A trademark works as a formal business name, logo or umbrella term that includes both your business name and logo. Essentially, this trademark helps customers differentiate between products and services. Furthermore, it also protects your company’s products or services from plagiarism and compromisation. Therefore trademarks work like intellectual property protectors.

What is a Trademark Assignment?

Since trademarks are a form of intellectual property, they may be sold, transferred or licensed the way assets can be shared. Such sharing or transferring of trademarks happens via an Assignment or licensing. There are several variations in ownership of the brand when the trademark is assigned. However, when it is licensed, only a few rights get handed down to third-parties. A majority of the rights still stay with the buyer. It may be done with or without assigning goodwill. If the trademark is registered, then the transfer must be recorded in the Trademark Register.

Benefits of Trademark Assignment

  1. Helps the brand owner unlock the actual value of the brand,
  2. Helps the assignee make use of the brand value of the product or service, rather than creating value for a new brand
  3. Serves as valid proof in case there are any legal disputes regarding the trademark

Requirements for AssignTrademark

  • Pending trademark application
  • Issued trademark registration
  • Business goodwill
  • Associated applications and registrations
  • International applications and registrations
  • Names of related individuals, both living and dead
  • Domain names registered email IDs and social media accounts
  • Execution Requirements
  • Signatories and witnesses
  • Notarization and Legalization
  • Execution date and address 
  • Power of attorney

Register your trademark

Notarization of the Trademark Assignment

The Assignment must be duly notarized and written out or stamped on a stamp paper of the right value or denomination. The notarization is mandatory if the assignee wishes to register the trademark in a foreign country. For instance, if the applicant lives abroad, he or she must notarize the same in their country of residence or country of execution. Even while doing so, care must be taken to see that it is stamped in India.

Furthermore, this move has been taken to make it easy to prove that there is no pending litigation. At the time of transfer, the assignor must submit an affidavit which is notarized stating that the trademark is truly theirs. This is why trademark assignments in India need to be notarized.

What is the process of the assignment?

  1. The assignee must apply for a trademark assignment in the designated manner.
  2. The assignor or assignee must issue Form ™-P either individually or via joint request.
  3. This form will help make the assignee a subsequent proprietor.
  4. Six months from date of proprietorship, apply with the Registrar of Trademark
  5. While the form may be filled and submitted later, the prescribed fees must be duly paid
  6. For assignment of certified trademarks, the regulation must come before six months from the date of assignment 
  7. Assignee must then advertise the assignment 
  8. Send a copy of the application and the advertisement to the registrar office 
  9. The registrar will then make the assignee a proprietor of the trademark 
  10. The trademark will record the specification of the assignment.

Ways to assign a trademark

  • Complete Assignment- All rights related to trademark, including the right to authorities and royalties are attached to a third-party
  • Partial Assignment- Transfer of specific rights or services and the owner retains the right to transfer other rights and earn royalties

Documents Required For Assignment

  • Trademark Registration Certificate
  • Both the assignee and assignor’s name and details
  • NOC from the original owner 

Documents Required For Trademark Registration

  1. Copy of the logo
  2. Self-Attested Form-48
  3. ID proof of proprietor
  4. Address proof of proprietor

Types of Trademark Assignment

  • With Goodwill– Encourages the exchange of proprietary rights and brand value of a trademark. The assignee can utilize the brand’s market reputation to further sales and growth.
  • Without Goodwill– Assignee does not get to utilize the brand value of the assignor. Therefore, customers cannot use the trademark the way the assignor does. Also called a gross trademark task.

Elements of Trademark Assignment

  1. The effective date of transfer
  2. A transformation of a trademark
  3. Name and details of the assignor
  4. Name and details of the assignee
  5. Consideration or remuneration paid for the trademark
  6. Warranties regarding ownership of the trademark
  7. Signatures of both the assignor and assignee 
  8. Notary public to notarise the trademark 

 

 

0

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