No multiple entities can own a single brand under the same goods or services. Overthe period of time, proprietor firm gets converted to partnership, a partnership may get converted to a Private Limited and so on. Due to numerous reasons, the registered proprietors tend to ignore to comply with the change in ownership procedures and later on face the consequences.
The rule says, a registered trademark shall be assignable and transmissible, with or without goodwill of the business concerned and in respect of all the goods and services in respect of which the trademark is registered. The same is applicable for the unregistered trademark too. Where an assignment of a mark, whether registered or unregistered, the assignment shall not take effect unless the assignee applies for the assignment to the Registrar within six months from the date on which the assignment is made.
Assignment enables the registered proprietor to enjoy the various benefits conferred under the law such as Right to the exclusive use, Right to re-assign, Right to seek legal remedies against infringement, Right to license the trademark to third party/s, Right to seek correction of Registrar, and any other such right as prevailing under the law.
Like assignment, trademark/s can even be transmitted to the successor of the owner upon his death or by operation of law. It is the devolution on the personal representative of a deceased person and any other mode of transfer, not being an assignment.
The law says that mere permission to use trademark will not amount to assignment of trademark. The assignment of registered as well as unregistered trademark in goods or services may be executed with or without goodwill of the business concerned.
The assignment must be in writing and specify the conditions and limitations to which the assignment in subject to. An assignment will not be registered by the Examiner if it is contrary to the public interest. Under Rule 75 of the Trademark Act, an application to register the title of a person who becomes entitled by assignment of transmission to a registered trademark shall be made in Form TM-P.
Few other advantages of assignment include:
Making future trademark applications in the name of current proprietor
Making international applications by the new proprietor
Filing suit against infringement by the current registered proprietor
Signing business agreements and tenders by the new proprietor
Helps in further expansion in business
Makes advertisements more effective and communicative inculcating confidence among the target audience
We, at Makhija and Associates, is equipped with team of IP professionals to advise, consult, draft and assist to execute the deed of assignment. Our vision to foresee the strategic changes in the businesses has helped clients bestow their trust and confidence upon us for assignments and transfer of brands. We take the proactive step in making our clients aware about such transfers etceven before they file the basic trademark application. This makes them plan a proper trademark application and make decisions about future ownerships of the trademark.
We are particular about the supporting documents and details to be collected during the execution of the deed of assignment. We make sure that the documents are at par as required under the provisions of the Trademark law. Our attempts to file the deed of assignment with the apt details make the procedure easy and mitigate the chance of corrections by the trademark registry.
We make the necessary submission (if required) by the trademark registry during the hearing and make prompt compliances to avoid delays in the completion of assignment procedures. Our decades old experience in IP has helped our clients to save their valuable time in IP and make sound business decisions.
We believe that IP is fundamental to any business strategy.
For all your IP requirements, call us on 25324718, or mail us at email@example.com.
Visit us at www.makhijaandassociates.com .