Trademarks nowadays are an integral part of every business as it is a part of Intellectual Property. It is uncommon nowadays for the value of business’ IP to far exceed its physical assets. Like their assets Trademarks could also be bought, sold or transferred between the entities. It is always advisable to update with the concerned registry about any kind of changes related to assignment, mergers, change in name of proprietor etc. having updated the Trademark office, it is easier to pursue and legal proceedings against any infriger.
The current system followed in the Indian Trademark office allows for recordal of changes in the details of the owner under Two methods-
- Changes due to assignment/ transmission
- Change of name of the proprietor
The exact request to be filed depends upon the specifics of each transaction
Below are the scenarios in which transfer of Trademark situations are given and it is assumed that all the scenarios mentioned below refer to the transfer of Trademarks with goodwill.
- Company A sells its Trademark to Company B
It is a straightforward case of Trademark assignment.
- Company which owns Trademark merges with company B o form a new company (which owns a company as A&B)
In the adobe example company A and B ceases to operate its business individually as they merge with each other.
- Change in Partnership Structure
In case of partnership firms if any partner dies, then it results in dissolution of the firm accordingly it is deemed that in Trademark owned by a firm deemed to be assigned/transferred o a new entity.
While recording an assignment/transfer of Trademarks the following factors also needs to be kept in mind:
- Under Indian law, it is imperative that a specific value is affixed to the trademarks in question. This is due to the fact that the transfer can only be enforced once the transfer document is duly stamped in accordance with the applicable stamp duty. The rate of stamp duty varies from State to State (for example, in Tamil Nadu, it is 7% of the consideration amount), and accordingly, it is important to have the requisite stamp duty paid.
- Trademark registry will reject the application if it has not been stamped or has not been stamped as per the requisite amount.
- In case of assignment or transfer is on a global basis then it is always advisable to mention India specific clauses with respect to the consideration paid to the Indian Trademark office, in the absence of a specific value for the Indian Trademarks/operations, the stamp duty would be payable on the entire consideration.
Recording Assignment/ Transmission with Trademark Office
The following documentation is required for recording Assignment or Transmission with the Trademark Office-
- A stamped and notarized assignment deed/ merger document showing the spec Trademark application numbers being transferred, as well as the specific consideration value as described above.
- An affidavit from the assignee stating that there is no litigation regarding the ownership of the marks in India.