Trademark assignment in India after buying or selling Brands

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Introduction

Modifications or corrections to a trademark application or its registration in India are rendered through a request that is filed before the trademark office. Normally, the modifications to an application are concerning typographical mistakes made at the time of drafting the registration application or regarding modifications such as the transition of title, change of name or address, change of legal counsel, change of date of usage of the trademark in India, etc.

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ASSIGNMENT OF TRADEMARK IN INDIA

ASSIGNMENT OF TRADEMARK

Grounds to File Form TM-P

The transition of title by way of Assignment, Merger, Amalgamation, or Acquisition are handled by the Transfer of Trademark Rights in India. For any other modifications, the form that must be submitted depends on the status of the trademark application. 

 

Herein, the Form TM-P is submitted when the trademark application has been published in the Trade Mark Journal and registered. Thus, a TM-P is submitted in order:

 

  1. To replace the next owner as registered proprietor on the register,
  2. To correct the facts provided for registered proprietors and users,
  3. For correction of registered trademarks,
  4. For modification in the description or specification of goods or services,
  5. For the change of goods, or
  6. For annulment of association between trademarks.

The abovementioned petitions are rendered under sections 16 (5), 40(2), 41, 42, 43, 45, 58, 59, 60 of the Trade Marks Act, 1999 and Rules 75, 80, 83, 85 of the Trademark Rules, 2017. 

 

The Form itself is split into three important components, Part A pertains to the applicant’s details, Part B pertains to the purpose of the request and Part C pertains to the details of the individual submitting the request and list of the documents affixed with the request application. Thus the following changes can be initiated through a form TM-P:

 

Change of Name: 

When the applicant wishes to change the name of the trademark owner without making any changes to the initial owner of the trademark, then the applicant must make such a request through the form TM-P. 

 

This request is submitted to the trademark office that processes and documents the change in the name of the trademark owner. The data and documents needed for change of name include:

 

Name Change Document: Authorized and Notarized copy of the trade register or company register indicating the name change must be provided. For instance, a certificate of incorporation proving the change of name published by the Office of the Registrar of Companies.

 

Power of Attorney (PoA): A scanned record of the PoA accepted and signed by the authorized signatory of the trademark proprietor under a different name. Legalization, notarization, or apostille of the POA is not mandated.

 

Change of Address: 

When the applicant wishes to change the address of the trademark proprietor, then the applicant must make such a request is made to the trademark office through the form TM-P. The data and documents needed for change of address include:

 

Address Change Document: An affidavit in the company letterhead when acceptable, clearly ratified by the authorized signatory of the trademark proprietor that the address of the trademark proprietor has shifted.

 

Power of Attorney: A scanned record of the PoA accepted and signed by the authorized signatory of the trademark proprietor under the new address. Legalization, notarization, or apostille of the POA is not mandated.

 

Change of Legal Counsel: 

When the applicant wishes to alter their legal attorney or trademark agent, then a suggestion is made to the trademark office by way of Form TM-P to document the change in the legal attorney or trademark agent. 

 

This is primarily recognized as the request to alter the address for service in India. The data and documents needed for change of legal attorney or trademark agent include the Power of Attorney. A scanned copy of the POA in favor of the new legal attorney or trademark agent must be provided. The same must be signed by the authorized signatory of the trademark proprietor. Legalization, notarization, or apostille of the POA is not mandated.

 

Amendment of Specifications: 

When the proprietor of a trademark wants to rectify the description or specification of the goods or services under the application as filed, a petition is submitted to the trademark office. It is essential to point out that the description or specification cannot be broadened from the initial application but can exclusively be limited or reduced as may be needed by the applicant.

 

Amendment to the Trademark Application or Registration: 

 

When the proprietor of a trademark wants to rectify the trademark that has been applied for, a petition can be submitted with the trademark office. However, any modification or correction which extensively modifies the nature of the trademark as initiated, whether registered or unregistered, would not be approved by the trademark office.

 

Conclusion

 

For filing a Form TM-P, no fees are due if the modification is formulated as a result of an instruction authorized by a public authority or as an outcome of statutory requirement. The Registrar is authorized to reject such an application. The modification cannot be so extreme that it alters the originality of the trademark considerably. Such modifications are not permitted as they cause different violations of the privileges of other registered users. It would also thwart the objective of the registration of the preliminary trademark.

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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

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