Registration of trademarks in India is a crucial stage in the production and protection of brands. Any person claiming to be the proprietor of a trademark used or proposed to be used by him may apply in writing to the Registrar in the prescribed manner for the registration of trademark. Sometimes the application for registration of a brand is subject to a few amendments. And there are certain forms, provisions, etc. to amend the details submitted in the application. Trademark amendments may also be made prior to registration or post-registration. Let us address the following post-registration amendments:
Post-registration Amendments:
There is a different clause concerning the amendments of registered trademarks once the registration of the mark has taken place. The registered owner will file TM-P along with the amended trademark, showing how the trademark will appear after the change. If any change is required after registration of the trademark, the applicant may correct itself. Such as a change in place of business, name of the company for the registered trademarks, etc.
Who can file amendment application:
The registered proprietor of the trademark or the person claiming to be the subsequent proprietor of the trademark based on any assignment or transmission can file an amendment.
Forms detail and Fees:
The Form TM-P shall be considered when applying for post-registration amendments. Only one form is meant for one request. For different applications, different forms should be submitted. If more than one request is claimed in one form, the first will be considered, and the rest of the requests will be ignored. The fees for change of name, change of address, assignment, or transfer of rights are different. Let us discuss one by one:
1. Name Change
The registered proprietor may record the change in the applicant name using the Form TM-P, along with an official fee INR 1800.
Documentary Requirements:
Applicants outside India should submit an application for a change of name along with a certified/notarized copy of the trade register/company register showing the change of name.
Indian Applicants should submit a certified copy of the name change document along with a request to change the name of the applicant.
2. Address Change
The change of address of the registered proprietor may be reported with the corresponding INR 900 official fees per trademark by registered trademark TM-P form.
Documentary Requirements:
Applicants outside India should apply for a change of address along with a certified/notarized copy of the trade register/company register showing the change of address.
Indian Applicants should submit a certified copy of the address change document along with a request to change the address of the applicant.
3. Assignment or Transmission of rights
Marks can be transferred from one owner to another, just like any other asset. Transfers of this nature may take the form of an assignment or a merger or a combination of two entities.
The assignment of trademarks is a process in which the owner of the trademark transfers the ownership of the trademark either with or without the goodwill of the trademark. An assignment can either be with goodwill or without goodwill:
Assignment with Goodwill: It is a process by which the owner transfers the rights and interests of the trademark associated with the goods it sells. Applications for registered trademark assignment may be made for each trademark via the TM-P Form with the corresponding INR 9000 for each assigned mark.
The assignment without Goodwill: An assignment where the owner restricts the assignee to use a trademark for the products for which the assignee uses it. To record the assignment without the goodwill of a business, the applicant must submit an application under Form TM-P with an official fee of INR 2700 within six months from the date of the assignment (extendable by three months as per prescribed forms), requesting the Registrar to advertise the assignment that is to give notice to the public of the assignment without the goodwill of a business.
Documents Requirements:
Assignment Deed: a duly stamped and notarized assignment deed with mandatory reference of the effective date; the full name and address of the assignee and the assignor together with their signatures; the amount paid by the assignee to the assignor for the assignment; the statement as to whether the assignment is with goodwill or not along with details about a trademark to be assigned.
For applicants outside India, the assignment document must be notarized in the country where it is executed, and the same can be stamped in India.
Post-registration Amendment Procedure:
The request for amendments may be submitted through the TM-P Form with the supporting documents of the registered owner. The application form may be submitted either electronically or physically with the prescribed fee. After the application has been submitted, the registry will examine the application. Some explanations or supporting documents may be required by the official in charge to prove the validity of the request.
It is advisable to seek professional assistance to make the amendments successfully.
