Trademark Registration Process:

Investing your time and money to build a particular brand and seeing the same brand name
being used by another, robbing you of your hard-earned brand reputation is not an agreeable
state of affairs. Many a time, trademark (TM) owners end up in protracted litigation because
when the time was right, they did not do trademark registration in India of their brand name.
Trademark registration process of the brand name is not a difficult task. A few simple steps, as
explained below and you would have the much-needed legal protection of your brand name
registration in India.

Step 1: Trademark Search

Many entrepreneurs do not comprehend the importance of a TM search. Having a unique brand
name in mind is not good enough reason to avoid a TM search. TM search helps you to know if
there are similar trademarks available and it gives you a fair picture of where your trademark
stands, sometimes, it also gives you a forewarning of the possibility of trademark litigation. Why
waste your money in time-consuming trademark litigation later when you can choose to avoid it
in the first place?

Step 2: Filing Trademark Application

After you are sure that your chosen brand name or logo is not listed in the Trademark Registry
India, you can opt for registering the same. The first step is to file a trademark application at the
Trademark Registry India. Nowadays, filing is mostly done online. Once the application is filed,
an official receipt is immediately issued for future reference.

Step 3: Examination

After a trademark application is filed, it is examined by the examiner for any discrepancies. The
examination might take around 12-18 months. The examiner might accept the trademark
absolutely, conditionally or object.

If accepted unconditionally, the trademark gets published in the Trademark Journal. If not
accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in
the examination report and a month's time would be given to fulfill the conditions or response to
the objections.

Once such response is accepted, the trademark is published in the Trademark Journal. If the
response is not accepted, one can request a hearing. If in the hearing, the examiner feels that
the trademark should be allowed registration, it proceeds for publication in the Trademark
Journal.

Step 4: Publication

The step of publication is incorporated in the trademark registration process so that anyone who
objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4
months from publication there is no opposition, the trademark proceeds for registration. In case
there is opposition; there is a fair hearing and decision are given by the Registrar.
Step 5: Registration Certificate

Once the application proceeds for trademark registration, following publication in Trademark
Journal, a registration certificate under the seal of the Trademark Office is issued.

Step 6: Renewal

The trademark can be renewed perpetually after every 10 years. Hence, your logo or brand
name registration can be protected perpetually.

As seen from the above, trademark registration in India process does not require much effort. It
is a simple process but one which is nonetheless very important for brand name registration.
We, at Intepat, can help you with the entire process of registration without you worrying about
deadlines and responses. Hence, understand the power of your brand name registration and
take steps in protecting it today.
Registration form
 ASSIGNMENT OF TRADEMARK

GENERAL UNDERSTANDING:
As physical properties are transferred, the same way trademarks are also transferred.
This transfer of trademark is called Assignment of trademark. In general terms,
Assignment means transfer of title, rights, interest and benefits from one person to
another person.
Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and
benefits to other person. The transferring party is called as “Assignor” and the receiving
party is called as “Assignee”.
STATUTORY DEFINITION:
Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in
writing by the act of the parties concerned;
WHO CAN ASSIGN A TRADEMARK:
As per section 37 of the Trade Marks Act, 1999, the person entered in the register of
trademarks, as the proprietor of a trademark, shall have power to assign a trade mark
and to give effectual receipt of for any consideration for such assignment.

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the
Goodwill of the business concerned either in respect of all the goods or services in respect
of which the said trademark is registered or of some of the goods or service.
Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with
or without the Goodwill of the business concerned.
PROCEDURE FOR ASSIGNMENT OF TRADEMARK:

Assignment with the Goodwill of Assignment without the Goodwill of

Business Business

 Trademark Pending for Registration  Trademark Pending for Registration

Relevant Form: TM-M Relevant Form: TM-M
Statutory Fees: Rs. 1,000/- (offline filing) Statutory Fees: Rs. 1,000/- (offline filing)
or or
Rs. 900 (online filing) Rs. 900 (online filing)
 Registered Trademark  Registered Trademark
Relevant Form: TM-P Relevant Form: TM-P
Statutory Fees: Rs. 10,000/- (offline filing) Statutory Fees: Rs. 10,000/- (offline filing)
or or
Rs. 9,000 (online filing) Rs. 9,000 (online filing)
Note: As per section 42 and rule 81:
First file TM-P (within six months of assignment
or extended period of three months) for obtaining
 direction of registrar for “advertisement of
assignment without goodwill” alongwith statutory
fees of Rs. 3,000/- (offline filing) or Rs. 2,700/-
(online filing). Secondly, file the above said TM-
M or TM-P, as the case may be.
REGISTRATION OF ASSIGNMENT OF TRADEMARK:
1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall
apply for registration of assignment before the Registrar of trademarks. (section 45)
2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details
of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to
him in respect of goods or services for which the assignment has been made. (section
45)
3. Where the validity of assignment is in dispute between the parties, the Registrar may
refuse to register the assignment until the rights of the parties are determined by the
competent court. (section 45)
4. Registrar of trademark shall dispose of the application for registration of assignment of
trademark within a period of 3 (three) months from the date of receipt of application. (rule
76 of Trade Marks Rules, 2017)
5. Registrar may, where there is reasonable doubt about the veracity of any statement or
any document furnished, may call upon any person who has applied to be registered as
proprietor of a registered trademark to furnish such proof or additional proof of title as the
Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)
6. Where in the opinion of the Registrar any document produced in proof of title of a
person is not properly or sufficiently stamped, the Registrar shall impound and deal with
it as per Chapter IV of the Indian Stamp Act, 1899. (rule 78 of Trade Marks Rules, 2017)
7. Where the Registrar has allowed the registration of assignment, then there shall be
entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-
a) the name and address of the assignee;
b) the date of assignment;
c) where the assignment is in respect of any right in the trademark, a description of the
right assigned;
d) the basis under which the assignment is made; and
e) the date on which the entry is made in the register.

IMPORTANT KEY POINTS

√ Assignment is to be in writing;
√ Registered or unregistered both type of marks can be assigned;
√ Assignment can be with or without the goodwill of the business;
√ Event of assignment asserts the rights and title in an assignee not the registration
thereof;
√ Registration of assignment is only prima facie proof of title of trademark;
√ Rights in an assignee exists even before registration of assignment of trademark.
Assignment of Trademark form
India: Trademark Licensing In India
Trademark licensing is the process wherein a registered proprietor of a trademark authorises a
third party to use the mark in the course of trade without transferring the ownership of the mark.
The licensing of the trademark allows the registered proprietor to let others use the mark without
assigning the ownership of the mark. The proprietor can also put other limitations on the use of
the mark through the terms that he puts into the licensing agreement. For example, the
proprietor may license a trademark to be used for only particular goods and services.

The term "license" or "licensing" is nowhere to be found in the Trade Marks Act, 1999. The
concept and the laws governing licensing of trademarks are found in Sections 48-55 of the Act.
It can be said that the term "registered user" in the Act is synonymous with the term "licensee".
Under the 1999 Act, "permitted use" as defined in Section 2(1)(r) means the use of a registered
trademark by a third person as a registered user; as well as, use by a third person by the mere
consent of the registered proprietor. The use of the word "may" in Section 48(1) of the Act
makes it apparent that registration of a licensing agreement is not mandatory for it to be
licensed. The agreement, however, must be in writing as oral licensing is no licensing. Though
the Act is silent on the issue of licensing of an unregistered trademark, such licensing is deemed
lawful under common law and is commonly referred to as common law licensing. Nothing in the
Act suggests that the rights of a licensee in the case of an unregistered trademark are different
from that in the case of a registered trademark.

Trademark licensing has become a common practice as it benefits both the licensor and the
licensee. The licensor earns money by way of royalty, while the licensee gets to commercially
exploit the mark. In addition to monetary benefits, the licensor also benefits due to the
expanding reach and popularity of the mark. But, if left unchecked, licensing could also harm the
repute of the mark. Hence, it is of utmost importance to incorporate clauses with respect to
quality checks of goods or services in the license agreement. Section 49 of the Act mandates
that licensing agreements shall state the degree of quality control. The object behind this
provision is that a connection in the course of trade between the proprietor and the registered
user should reflect in the licensed use of the mark. The Bombay High Court in UTO Nederland
BV v. Tilaknagar Industries Ltd1 held that the license could have been rendered invalid, had the
performance and terms of the agreement suggested existence of facts which implied no quality
control. It was held in Bowden Wire v. Bowden Brake2that a trademark license ceases to be
valid if there is no connection in the course of trade with the registered proprietor. In the famous
Barcamerica case3, the Court held that "naked and uncontrolled licensing" results in the
trademark ceasing to function as a symbol of quality wherein it appears that the registered
proprietor has abandoned the trademark and in such a scenario he may be stopped from
asserting his rights over that mark.

As discussed above, the registration of the license agreement is not mandatory; however, it is
advisable to do so since it creates a record that becomes useful in the case of any dispute in the
future. By way of registration of the license agreement, a licensee becomes a "registered user"
in lieu of Section 49. For the registration of a registered user, a joint application is to be filled to

1
MANU/MH/1827/2011.
2
RPC 45 at 580.
3
Barcamerica International USA Trust v. Tyfield Importers Inc, 289 F.3d 589 (9 th Cir. 2002)
the Registrar through the TM-28 Form within six months from the date of the agreement. The
registration process is hereby summarised in a few steps:

1. Filling of TM-28

The form TM-28 is to be filled in triplicate along with the following documents:

 The license agreement or a duly authenticated copy thereof.

 Document and correspondence, if any or a copy thereof.
 Supporting affidavit.
 Such other documents and evidence/information as the Registrar may call upon.

2. Drafting Supporting Affidavit

The supporting affidavit should contain the following:

 The precise relationship between the registered proprietor and the proposed registered
user.
 Particulars showing the degree of control by the registered proprietor.
 Goods & services in respect of which registration is proposed.
 Conditions or restrictions imposed by the license.
 Period of permitted use of the mark.

3. Ensure that License Agreement includes the following:

 All particulars mentioned in supporting affidavit.

 The terms with respect to royalty and other remuneration.
 The means for bringing the permitted use to an end.

4. Filling of the Application

The filing of application through Form TM-28 can be done either online or offline to the
Registrar.

5. Acceptance by the Registrar

The Registrar may accept the application either completely or conditionally. A conditional
acceptance takes place when conditions/restrictions/limitations are put on the permitted use
provided in the license. In the case of conditional acceptance, the registrar will issue a notice to
the applicant.

6. Hearing in the case of Conditional Acceptance

On the issue of notice of conditional acceptance by the Registrar, the parties may apply for a
hearing. On the application of hearing, the Registrar may appoint time within two months. After
the hearing, the Registrar may accept completely or conditionally, or reject the application
altogether. The order of the Registrar is to be communicated in writing. It is to be noted that if
the party fails to apply for hearing within one month of the issue of notice, the registrar may
accept the agreement with the conditions and limitations he imposed.
7. Entry in Registrar

When accepted, the Registrar records the proposed registered user as a registered user in the
register.

8.Notification to other registered users, if any

After the recording takes place in the register, the Registrar needs to ensure that notice to every
other registered user of the trademark (if any) is issued. The Registrar also needs to ensure that
this fact is inserted in the Trade Mark Journal.

The Trade Mark Act, 1999 talks about "assignment" and "transmission" of trademarks and does
not explicitly mention anything about "license". Therefore, it is pertinent to understand that there
are some basic differences between assignment and licensing of trademarks. An assignment is
a permanent transfer of ownership of a trademark, whereas, licensing is a temporary transfer
with respect to certain rights for using a trademark. Furthermore, a license can be revoked
unlike in the case of assignments. Therefore, assignments result in a change of ownership
wherein the assignee becomes the owner of the trademark, unlike licenses where only limited
rights are transferred to the licensee for a particular time period.

The licensing of trademarks is an effective practice for the regulated exploitation of the mark. It
helps both the licensor and the licensee in the growth of their respective businesses.
Additionally, it results in the development of the brand image as the licensee is required to
maintain a certain degree of control over the standard and the quality of the goods and services
that he sells or provides under the mark.
Lisence of trademark form