A trademark can continue to be protected after an assignment, but the ownership change should be properly recorded with the Trade Marks Registry. Trademark renewal and trademark assignment are two different processes. If a registered trademark has been transferred from one proprietor to another, businesses should first ensure that the new proprietor’s title is properly recorded before dealing with future renewal and other trademark matters.
Trademark assignment is the transfer of rights in a trademark from one person or business to another. For example, a company may transfer its registered brand to another company as part of a business sale, restructuring or commercial transaction.
Under Section 38 of the Trade Marks Act, 1999, a registered trademark can generally be assigned or transmitted, subject to the restrictions provided under the Act. Section 45 deals with registering the title of the person who becomes entitled to a registered trademark through assignment or transmission.
This means an assignment is not simply a change in the name printed on a certificate. The change in ownership should be properly dealt with through the Trade Marks Registry.
A registered trademark normally remains subject to its existing registration period. Assignment does not by itself create a completely new trademark registration period.
The new proprietor should therefore check:
Trademark renewal is handled separately under the applicable renewal procedure. The Trade Marks Rules provide for renewal through Form TM-R.
If the trademark register still shows the previous proprietor, there can be a mismatch between the commercial owner and the official record.
For example, suppose Company A owns a registered trademark and later assigns it to Company B. Company B should not simply treat the assignment agreement as the end of the process. The relevant title-registration procedure should also be considered.
The current IP India fee schedule specifically provides for an application under Section 45 to register a subsequent proprietor in cases of assignment or transfer, using Form TM-P.
Before proceeding with trademark renewal after assignment, review the ownership records, assignment documents, registration number, classes, expiry date and Registry status.
In short, trademark assignment changes ownership, while trademark renewal extends the registration. They should be treated as separate compliance steps.
Businesses dealing with an assigned trademark should verify that the ownership records are properly updated before relying on the trademark for future transactions, licensing or enforcement.
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Trademark registration in India is generally valid for 10 years and can be renewed every 10 years. The renewal application is filed using Form TM-R with the prescribed fee. Under the Trade Marks Rules, an application for renewal may be made up to one year before the expiry of the …
