This article is written by team LegalWiz. The article discusses who can apply for trademark under the Indian law. LegalWiz.in is a premier online legal service provider. Experts at LegalWiz can help you with business establishment along with registration of trademark and allied services.
The person registered as Applicant while filing the application will reserve the rights granted on registration of Trademark in India. The person that uses the brand name for business purpose is the rightful owner of the trademark. Therefore, apart from individual, a legal entity like company or LLP can also act as an applicant and filing for registration of the application.
A Registered Trademark is not only part of assets of company (or other business entity), but it also has a huge impact over a company’s numbers in terms of turnover or market worth for which this kind of registration is investment rather than a cost. Therefore, the question arises is who shall be the owner of the trademark? The company or the promoter?
The promoters or the partners of the company/LLP are those who promote the company to the operation stage. Until a company is not in existence, the name cannot be entered as applicant. In this case, the promoters of the proposed company can apply for the Trademark in their own name (as applicant). Here, after online trademark registration, the rights can be assigned by the owner to the company for usage for business and growth purpose. This application may also support the application for name approval for the company registration. Thus, this is a major benefits of trademark registration before company incorporation apart from protecting the brand name from upcoming competitors and threats.
By Trademark registration, the promoters will be assured to start operations with security and a relief that no one can make an unauthorised usage of their brand name. After applying for Trademark, the Company can start using ™ or ® symbol which is an indicative signal of ownership to all its competitors as well as customers who wants to approach the entity.
Further, a company already incorporated may get the Trademark in its own name on the basis of the Goodwill earned and get protection against infringement.
Company as Applicant for Trademark Registration
The Trademark is to be registered under the Trademark Act, 1999 by following the procedure specified therein.
The appropriate classes based on business activities and product is selected to make a brand name search. Confirming the availability of brand name, online trademark application in name of company is made after appointment of Authorised Signatory (any director) and an Attorney (professional, who files the application e.g. LegalWiz.in).
The name under registration can be same of company’s name or a different brand name. Apart from the brand name or company name, one can file separate applications for the name of products by which the product or services of the company are marketed and known in market. For Example, Paytm is a consumer brand of “One97 Communications”, where the product is known in the name of Paytm. In the same manner, a company can produce its goods in another name and can get the Trademark in its product name also.
Documents Required for Trademark Registration in name of company:
While filing Trademark Registration Application in the name of company the documents required to be submitted as the applicant are enumerated below:
- Certificate of Incorporation
- PAN card of Company
- General Power of Attorney (GPA)
- Additional Representation
- Documents to claim for user date, if any
- Board Resolution authorising Authorised Signatory and Attorney
Filing application of trademark registration online avails reduction of 10% on Government fees. an important note while filing application in name of company is about the Government fees, which is INR 9,000, whereas fees for registration in name of individual is INR 4,500 only. The key point is to claim rebate on Government fees, company can obtain the Registration Certificate under MSME Act or Start-up India Scheme. Application supported by this certificate can claim rebate of 50% on the registration fees.
However, if company visualize its expansion in near future, it may, irrespective of rebate offered in the Government fees, directly proceed for online trademark registration considering the benefits offered including value of intangible asset produced for the company.
Application by individual and assignment to company:
In case, the application is made prior to registration of company i.e. in name of any of the promoters, the promoters can transfer the rights and ownership to company by way of assignment. The same can be adopted by company by way of passing resolution for entering into agreement with the Promoters/Director with respect to IP Assets held by them. The process covers few applications, affidavits and Declaration to be submitted before the Registry for successful transfer of the Brand name to the Company.
Examination and hearing are stages of trademark registration process, during which the Registry might ask the applicant to provide proof to support the application. At given time, normally the invoices, accounts, etc. are requested. Here, the proof containing name of owner and brand name are required to be furnished. In case, the trademark is applied in name of individual other than company, he shall provide supporting proof of right to use the name. Hereby an agreement of usage by company and promoter or third party can be executed. If the company is making an application in its own name, the proof in name of company will be necessary to be presented on demand. Thus, on application for trademark, the applicant must keep in mind to make available considerable proof on demand by the registry.
Application under numerous classes
If the company deals in more than one product or activities, it is more beneficial to file an application under all applicable classes as it will provide protection for all related product(s) and activities. Reason to why this is important is that a competitor may apply with same or deceptive name that can affect the business negatively.
For example, a company engaged in manufacturing and online trading of leather bags will attract at least two classes. Class 18 will cover the manufacturing whereas class 35 will cover online trading. If the product is protected under class 18 only considering protection to manufacturing, the online trading can be missed. A competitor can use the same brand name for online trading because activity of “online trading” is not covered by class 18. Therefore, the value created by brand name can benefit the competitor and once he obtains the rights on the brand name, he can confine the company to use it for online trading. Therefore, application under both applicable classes is necessary for the company to secure its brand name and value.
The application of trademark registration is a careful step where each element is decided after consideration of situational facts and provisions of law. This requires hiring a trademark attorney, who can assist and guide you for registration process. Here the expenses made on registration is more of value rather than cost as the business entity can gain considerable advantages and profit based on this intangible asset.