Looking to buy registered trademark in India? Purchasing an existing registered trademark can provide businesses with an established brand name without having to start the trademark registration process from scratch. Singh Risk Management Services provides assistance in identifying and purchasing registered trademarks available for sale in India. We help buyers understand the trademark, verify its status, conduct due diligence and complete the documentation and assignment process.
On this page, we explain how to buy a registered trademark in India, the important terms involved and the principal steps that should be followed before completing the transaction.
What Does Buying a Registered Trademark Mean?
Buying a registered trademark generally involves the assignment of the trademark from its existing owner to another person or entity.
The existing owner transfers his or her rights in the trademark to the purchaser through an Assignment Deed. The purchaser then takes the necessary steps to have the change in ownership recorded with the Trade Marks Registry.
A registered trademark can be purchased for a business that already has an established brand, or for a new business looking to acquire a suitable brand name.
Important Terms in Trademark Purchase
Before purchasing a registered trademark, it is useful to understand some of the terms commonly used in the transaction.
Trademark Assignment: It is the transfer of ownership or rights in a trademark from one person or entity to another. The assignment may be made for consideration or, depending upon the circumstances, without consideration.
Assignor: The assignor is the existing owner of the registered trademark who transfers the trademark to another person or entity.
Assignee: The assignee is the person or entity acquiring the trademark from the assignor.
Assignment Deed: It is the principal legal document used to record the transfer of rights in a trademark from the assignor to the assignee. The deed generally sets out details such as the trademark being transferred, consideration, rights being assigned, representations of the parties and other terms governing the transaction.
Affidavit of No Legal Proceedings: An affidavit may be obtained from the assignor confirming ownership of the trademark and disclosing whether any litigation, opposition, rectification proceeding or other legal proceeding is pending in relation to the trademark.
The exact documents required may depend upon the circumstances of the particular transaction.
Process to Buy Registered Trademark
The following are some of the principal steps involved in purchasing an existing registered trademark.
- Search and Identify a Suitable Trademark
The first step is to identify a registered trademark that is suitable for your business.
You may search for trademarks based on factors such as:
- Trademark class
- Product or service
- Industry
- Brand name
- Existing registration
- Registration validity
- Location or business requirements
If you are specifically looking for a registered trademark for sale, it is important to obtain complete details of the trademark before making any payment to the seller.
- Verify Ownership and Registration Status
Before purchasing a trademark, verify that the person offering the trademark for sale is the registered proprietor or is otherwise legally authorised to transfer it.
The status and available details of a trademark can be checked through the official Trade Marks Registry portal.
Official Trade Marks Registry Status Search
The buyer should verify details including:
- Trademark number
- Trademark name
- Registered proprietor
- Class
- Goods or services covered
- Registration status
- Date of application
- Validity of registration
- Available transaction history
This is an important step because a buyer should know exactly what is being purchased before entering into an assignment transaction.
- Conduct Trademark Due Diligence
Due diligence is one of the most important steps when buying a registered trademark.
The available records should be examined to understand the history and current status of the trademark.
Due diligence may include checking whether:
- The seller is the actual proprietor of the trademark.
- The trademark is currently registered and valid.
- The trademark has previously been assigned.
- Any application relating to ownership is pending.
- Any opposition or rectification proceeding is pending.
- Any litigation concerning the trademark is known.
- The trademark has been renewed where required.
- The trademark covers the products or services for which you intend to use it.
- There are any restrictions or other issues affecting the proposed assignment.
A proper due diligence exercise can help identify potential problems before the purchase is completed.
- Negotiate the Purchase Terms
Once the trademark has been selected and the necessary due diligence has been conducted, the parties can negotiate the terms of the transaction.
The parties should clearly agree upon matters such as:
- Purchase price
- Payment schedule
- Trademark rights being transferred
- Responsibility for government fees and stamp duty
- Documents to be provided by the seller
- Execution of the Assignment Deed
- Responsibility for filing the transfer application
- Cooperation required from the assignor after execution
These matters should preferably be recorded in appropriate documentation.
- Prepare the Trademark Assignment Deed
The Assignment Deed should be carefully prepared to record the transfer of the trademark from the assignor to the assignee.
It should clearly identify the trademark and specify the rights being transferred.
The deed may also contain representations and warranties from the assignor concerning ownership, pending proceedings and other matters relevant to the transaction.
Since a mistake in the assignment documentation can lead to objections or delays, it is advisable to have the document prepared or reviewed by an experienced intellectual property attorney.
- Pay Applicable Stamp Duty
The Assignment Deed may be subject to stamp duty under the applicable stamp laws.
Stamp duty requirements can vary depending upon the relevant state and the circumstances of the transaction.
The parties should therefore ensure that the Assignment Deed is properly stamped in accordance with the applicable requirements.
- Execute the Assignment Documents
The Assignment Deed should be properly executed by the assignor and assignee.
Depending upon the circumstances, additional documents such as an affidavit relating to ownership or pending legal proceedings may also be required.
The documents should be signed, witnessed and notarised wherever required.
The original executed documents should be retained safely because they may be required for filing and future reference.
- Apply for Recordal of the Trademark Assignment
After execution of the Assignment Deed, the assignee should take the necessary steps to have the change in ownership recorded with the Trade Marks Registry.
The appropriate application, including Form TM-P where applicable, should be filed together with the prescribed documents and applicable government fee.
The purpose of this process is to update the official records of the Trade Marks Registry and record the assignee as the subsequent proprietor of the trademark.
Frequently Asked Questions
How Long Does It Take to Transfer a Registered Trademark?
There is no single fixed timeline for completion of the trademark assignment recordal process. The time taken may vary depending upon the circumstances of the application, the workload of the Trade Marks Registry and whether any objection, clarification or additional documentation is required.
The buyer should therefore distinguish between the execution of the Assignment Deed and the recordal of the change in ownership with the Trade Marks Registry. The Assignment Deed records the transaction between the parties, while the subsequent recordal process is undertaken to update the official trademark records.
The parties should ensure that the Assignment Deed appropriately addresses the rights and obligations of the assignor and assignee during this period.
Can I Use a Trademark After Buying It?
This is an important question for anyone looking to buy an existing trademark. The rights and timing of use should be considered in light of the terms of the Assignment Deed, the nature of the transaction and the applicable provisions of trademark law. The assignment documentation should therefore clearly address when the purchaser is entitled to exercise the rights being transferred and what obligations remain with the assignor.
A buyer should not assume that simply signing a document automatically resolves every issue concerning use, ownership and recordal. Professional legal advice can help ensure that the transaction is structured appropriately.
