Why trademark assignment needs to be notarized
Hemlata Khandelwal / 2021-03-06 04:52:29

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

Meaning of a Trademark Registration

A trademark is a formal business name. It serves as a logo or umbrella term that includes both your business name and logo. It helps customers to know about the different between the services and products. Apart from this, it also protects your company's products or services from plagiarism and compromise. Trademarks, therefore, act like intellectual property protectors.
What is a trademark assignment?
Since trademarks are a form of Intellectual Property, they can be sold, transferred, or licensed by way of sharing assets. Such sharing or transfer of a trademark is through an assignment or licensing. There are many differences in ownership of a brand when a trademark is assigned. However, when it is licensed, only certain rights are assigned to third parties. Trademark is important for company who have a company registration in India. Most rights are still with the buyer. This can be done with or without providing goodwill. The transfer will be recorded in the register in case of trademark registration.
Benefits of trademark assignment
  1. Helps the brand owner unlock the true value of the brand.
  2. Helps use the brand value of a product or service, rather than creating value for a new brand.
  3. Serves as valid proof if there is a legal dispute with the trademark.
Requirements for trademark assignment
  • Pending trademark application
  • Trademark registration issued
  • Business Goodwill
  • Related Applications and Registration
  • International Applications and Registration
  • Names of the persons concerned, both living and dead
  • Domain Name Registered Email ID and Social Media Account
  • Performance Requirements
  • Signer and witness
  • Legalization
  • Execution date and address
  • Power of attorney
Notarization of trademark assignment
The assignment should be duly notarized and written on stamp paper of the correct value or denomination. Notarization is mandatory if you wish to register a trademark abroad. For example, if the applicant lives abroad, he should be notarized in his place of residence or country of execution. Also, it should be kept in mind that it is stamped in India.
  1. Further this step has been taken to prove that no trial is pending. At the time of transfer, the assignee must submit an affidavit notarized stating that the trademark belongs to them. This is why trademark assignments in India need to be notarized.
What is the assignment process?
  1. The assignee must apply for the trademark assignment in the prescribed manner.
  2. The assigner or assignee should issue the Form Trademark-P either in person or through a joint request.
  3. This form will help the assignee become a subsequent owner.
  4. Six months from the date of ownership, apply with the Registrar of Trademarks
  5. While the form can be filled and submitted later, the prescribed fee must be duly paid.
  6. Regulation must come six months before the due date for the assignment of a certified trademark.
  7. The assignee must advertise the assignment
  8. Send a copy of the application and advertisement to the Registrar Office
  9. The registrar will then make the assignment the owner of the trademark
  10. The trademark will record the specification of the assignment.
Ways to assign a trademark
There have two ways to assign a trademark
  • Full Assignment
  • Partial Assignment
  1. Full Assignment - All rights related to trademarks including rights of officials and royalties are associated with third parties.
  2. Partial assignment – Transfer of specific rights or services, and the owner has the right to transfer other rights and to earn royalties
Documents Required for Assignment
  • Trademark registration certificate
  • Both the assignee and assignee name and description
  • NOC from the original owner
Documents required for trademark registration
  • Logo copy
  • Self Attested Form –48
  • Proprietor's ID proof
  • Proprietor's address proof
Types of trademark assignments
  1. With goodwill – Encourages the exchange of proprietary rights and brand value of a trademark. The assignment can use the brand's market reputation for further sales and growth.
  2. Without goodwill - The assignee does not get to use the brand value of the assignee. Therefore customers cannot use the way a trademark is assigned. Also known as gross trademark work.
Elements of trademark assignment
  • Effective date of transfer
  • A change of a trademark
  • Assignee Name and Description
  • Name and Description of Assignment
  • Payment or remuneration for trademark
  • Trademark Ownership Warranty
  • Signature of both assignee and assignment
  • Notary public for notarizing the trademark

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