Trademark – Owned by Company or by Promoter and Assigned to Company?

A Company alike any other individual can apply for the Registration of the Trademark and can legally own the Trademark as it is an Intangible Asset for the Owner. Benefits of the Trademark are not only available and limited up to the single person but also have a huge impact over a Company, for which investment in this kind of registrations is always worthy.

Let’s first talk about the promoters who are planning to register their Company with MCA. In this case, the promoters of the proposed company can apply for the Trademark in their own name (applicant) as they cannot file an Application in the name of the Company which yet is not into existence. However, once the mark gets registered, the applicant can assign the rights for using the Trademark in the name of the Company for its usage for business and growth purpose. Also, one should always keep in mind that if you have made an application to register the brand name, there are lots of chances to get the same name approved with MCA for the Proposed Private Limited Company. Thus, one can count this as a major advantage of getting a Company Trademark Registration.

In addition to same, it can aid to commence operations with security and a relief that no one could be able to make an unauthorised usage of their brand name. After applying for Trademark, a Company can start using the symbol which is a indicative signal to all its competitors as well as customers who wants to approach the Company seeing their brand image and logo.

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.

Trademark Registration under Company’s Name:

The Trademark is to be registered under the Trademark act, 1999 by following the procedure specified therein, which is already provided in detailed manner in our previous blog Trademark Registration Procedure & Process in India.

After checking the availability of the name, one can apply for the Trademark for the classes under which the activities and product of the company falls or their businesses related thereto. The application can be made after appointment of Authorised Signatory (any director) and an Attorney (professional, who files the application e.g. LegalWiz.in)

Any person can apply for the brand name being unique or same to the name of the Company. Along with which, 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 same manner, a company can produce its goods in another name and can get the Trademark in its product name also.

Documents Required for Company Trademark Registration:

The documents required to be submitted to Registry by company as the applicant, are enumerated below:

1. Certificate of Incorporation
2. PAN card of Company
3. General Power of Attorney
4. Additional Representation
5. Documents to claim for user date, if any
6. Board Resolution authorising Authorised Signatory and Attorney

The Government Fees for making an application by company, is Rs 9,000/-. However, if a company is willing to claim the rebate of 50% on Government Fees, the same is possible by way of providing the Registration Certificate under MSME Act or Start-up India Scheme. However, if company visualize its expansion in near future date, it may, irrespective of rebate offered in the Government fees, Company can directly apply for Trademark Registration considering its advantages as it is always considered as a valuable asset for the company.

Trademark owned by Individual, assigned to Company:

Further, if any application is made before Incorporation of company (in the name of any of the promoters) the Trademark can be transferred to the company after Incorporation by way of assignment and company can adopt the same by way of passing resolution for entering into agreement with the Promoters/Director with respect to IP Assets held by the 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.

If a company is engaged into more than one product in different names or in the same name but falling under different classes, it is advisable to protect all products under all the classes in which product(s) falls in order to claim the benefits for all the products and to secure their right to use.

A Trademark is a valuable asset for any Company as the company can gain considerable advantages and profit based on this intangible asset.