Trademark

What is the Importance of Notarization of Trademark Assignment?

calendar18 Dec, 2020
timeReading Time: 4 Minutes
Notarization of Trademark Assignment

If you are running a business or a company, then you should know about the trademark and what is their significance. But do you know what the Importance of Notarization of Trademark Assignment is?

Trademark is an intellectual property of any business and institutes any words, design or expressions that are exclusive to the business and makes it recognizable to the business. The trademark is listed by the business enterprises and the rights to utilize the marks lies with the business. Trademark Assignment makes any documents reliable and trustworthy.

What is a Trademark & Trademark Assignment?

A trademark works as a formal business title, logo or authority term that comprises both your business name as well as logo. Fundamentally, the trademark helps the consumers in differentiating between Goods & Services. Additionally, it also defends the company’s goods or services from copying and theft. So trademarks work like protectors of intellectual property.

Trademark Assignment

Since a trademark is type of intellectual property[1], they can be traded, transmitted or licensed the way assets are done. Such sharing or transferring of trademarks occurs through a Trademark Assignment or licensing. There are several differences in proprietorship of the brand when the trademark is allotted.

Though, when trademark is licensed, only few rights are handed down to third party to whom the trademark is being assigned. Majority of the rights always stays with the purchaser. It can be done with or without transferring the goodwill. If the trademark is registered, then the hand over should be recorded in the Register of the Trademark.

Benefits of Trademark Assignment

The benefits of Trademark Assignment are as follows-

  • Helps the brand owner in unlocking the real value of the brand name;
  • Helps the assignee in utilization of the brand value of the goods or service, rather than creating value for a new brand;
  • Assists as valid proof in case of any legal disputes related to the trademark.

Requirements for Notarization of Trademark Assignment

The requirements for Notarization of Trademark Assignment are as follows-

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

Notarization of Trademark Assignment

The Trademark Assignment should be duly notarized and written on a stamp paper or stamped for the right value as well as denomination. The notarization is compulsory if the assignee wishes to obtain Trademark Registration in a foreign country.

For example, if the applicant subsists abroad, they are required to notarize the same in the country of residence or in the country of execution of trademark. While doing so, care should be taken to see that if the assigned trademark is stamped in India.

Additionally, this move is taken to prove that there is no pending litigation in the country of origin. At the time of handover, the assignor should submit an affidavit that is notarized stating that the trademark is truly in their possession. This is the reason for notarization of Trademark assignment in India.

What is the Process of the Notarization of Trademark Assignment?

The processes of the Notarization of Trademark Assignment are as follows-

  • The assignee should apply for a trademark assignment in a selected manner.
  • The assignor or assignee should issue Form TM-P either individually or through a joint request.
  • Form TM-P will help make the assignee a subsequent owner of Trademark.
  • Six months from date of ownership, apply with the Registrar of Trademark for assignment of Trademark
  • While the Form can be filled and submitted later, the prescribed fees should be duly paid
  • For assignment of specialized trademarks, the guidelines should be applicable before six months from the assignment date
  • Assignee should then advertise the Trademark assignment 
  • Send a copy of the application with the advertisement copy to the Registrar Office 
  • After examination, the registrar will then make the assignee owner of the trademark 
  • The trademark will then record the requirement of the assignment.

Documents Required For Trademark Assignment

The documents required for notarized Trademark Assignment are as follow:-

documents required for notarized Trademark Assignmen

Documents Required For Trademark Registration

The documents required for notarization of Trademark Registration-

  • Self-Attested Form-48
  • ID proof of proprietor
  • Copy of the logo
  • Address proof of proprietor

Elements of Trademark Assignment

The elements of Trademark Assignment for notarization are as follows-

  • Warranties regarding ownership of the trademark
  • The effective date of transfer
  • Signatures of both the assignor and assignee 
  • Notary public to notarize the trademark 
  • Name and details of the assignor
  • Name and details of the assignee
  • Consideration or remuneration paid for the trademark
  • A transformation of a trademark

Types of Trademark Assignment

There are four categories of trademark assignments are-

Complete Assignment

The assignment of all rights regarding the right to sell, receive royalties relating to the trademark to the owner, is known as complete assignment. In addition, complete assignment refers to the trademark assignment concerning all goods and services.

Partial Assignment

The assignment of trademarks concerning only to certain goods and services is called a partial assignment. A company having several goods and services can choose to allocate only a certain merchandise or service and hold on to the rest. This is known as partial assignment.

With Goodwill

Goodwill of an organization is considered as its brand value. When the trademark assignment is with goodwill, the owner gets to make use of the brand value of the trademark also. The owner can use the trademark for the same line of business.

For instance, Mr. A sells the trademark of his electrical appliance business named ‘Monee’ to Mr. B. Mr. B can take over the trademark and as well as the brand value and carry on the same business. Here Mr. B earns the trust of the customers of Mr. A as the customers attach quality to a particular brand.

Without Goodwill

The assignment is prepared only for the trademark and not the connected brand value. The owner must use the trademark for a different line of business. Taking the same case in point as above if Mr. A sells the trademark without the goodwill of his brand, Mr. B is not allowed utilize the brand name ‘Monee’ for the same line of business that is electrical appliance business.

Conclusion

The Trademark Assignment should be duly notarized and written on a stamp paper or stamped for the right value as well as denomination. The notarization is compulsory if the assignee wishes to obtain Trademark Registration in a foreign country. The reason for notarization of Trademark assignment in India is to prove that there is no pending litigation in the country of origin.

Read our article: What is the Present Scenario of Trademark Registration for Online Business? Let’s Understand in Detail!

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