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

Introduction

A trademark is an extremely valuable asset that every entity, including companies, can legally own. There are many benefits that come with trademark ownership, individual or company based. The main being able to protect your brand name. However when it comes to applying for trademark registration of a new company, a common question that business owners have is who should own the trademark, the company or the promoters of the company. In this article, we will explain in depth about trademark ownership, individual or company based. We will also help you answer the question should I trademark my name via a promoter or company, as well as when can an individual own a trademark for a company. So let’s dive in! 

Who is a Promoter?

Before understanding the nitty-gritty of trademark ownership, individual or company based, let’s understand who are the promoters of a company. Promoters are those individuals or entities that set up the Company. A company has Promoters when it’s at the “proposed” stage, in other words, the company has not been registered yet.

Trademark Registration under Promoter’s Name

Now let’s get to the question of can an individual own a trademark for a company. Since the company is not registered yet, it’s non-existent and cannot apply for a trademark in its own name. This is why promoters have to apply for the trademark in their name at this stage. One might wonder however why the promoters of the company might choose to apply for the trademark even before the companies registered.

Promoters apply for trademark registration before registering the company mainly because owning a trademark for a certain brand name simplifies gaining Company Name approval from the MCA, in addition to taking proactive steps to protect their brand name. If any Trademark(s) is registered in the name of any promoters, they can easily transfer those Trademarks to the company by Trademark assignment after the company registers.

Trademark Registration under Company’s Name:  

Registering a trademark in the company’s name is highly preferable. This ensures that the company itself owns even the intangible and intellectual property assets. It makes it very convenient for the company to be able to make any decisions related to the trademark. Be it licensing or even filing legal suits against infringers. Any Company can apply for a Trademark for the name of their Company. Along with that, they can also file separate applications for the names of their products by which the products or services. For Example, Paytm is a consumer brand of “One97 Communications”, where the product is known in the name of Paytm, which they have Trademarked.

Process of Trademark Registration For Companies and Promoters

When it comes to trademark ownership, individual or company based, the following Trademark registration process must be followed. This process is quite vast and requires the help of legal experts. In summary, it has the following steps:

• First, you have to pick the apt Trademark class for registration of your goods or services.
• Secondly, you need to check if anyone else has already registered a similar Trademark. To check, you have to use the IP India Trademark website.
• Thirdly, you have to fill out and submit a Trademark application either at the Trademark Registry or online on the IP India website. You can start using the TM symbol next to your Trademark after successful submission.
• The fourth step is for the Registrar to examine your Trademark and evaluate if it’s appropriate for Trademark Registration. They will either raise objections or approve the Trademark. In case of objections, you need a Trademark Attorney to file replies. You can also choose to not submit any reply and abandon the application.
• Once approved, the authorities publish the Trademark in the Trademark Journal. Any person who believes this Trademark resembles their own must file an opposition within 3 months from its publication. If you receive opposition, once again you need a Trademark Attorney to file replies to it. The Trademark registry will evaluate your replies with the other party’s statements and decide if you can register your Trademark. You can also abandon the application at this point by not filing any replies.
• Finally, you will receive your registration certificate if there is no opposition or if the Trademark registry finds your replies to the opposition to be satisfactory. After this, you can use the ® symbol next to your Trademark.

Documents Required for Trademark Registration

When it comes to trademark ownership, individual or company based, the following documents are required for Trademark registration :

• Proof of Applicant: This includes documents such as PAN, Address Proof of applicant, and Certificate of Registration/Incorporation in case of applicants other than individuals. 
• Board Resolution: For companies, it is mandatory to provide a board resolution from all the directors that allowed the company to apply for a Trademark. Private limited and public companies can only apply for a Trademark after receiving the approval.
• Brand Name/ Logo/ Slogan: You have to provide the details of the Trademark that you’re trying to register.
• Proof of TM Use: Documentary proof such as invoices, registration certificates, etc. with the brand name/Logo. 
• MSME/ Start-up India Certificate: This works as proof of business. Additionally, partnership firms and body corporates (other than an individual) can avail 50% rebate on Government fees if they provide their MSME OR Start-up India registration certificate.
• Power of Attorney: You have to file TM-48. It is a legal document that allows a Trademark attorney to file the Trademark on your behalf with the Trademark registry.
• User Affidavit: Moreover, for claiming specific user data, you have to submit a user affidavit depending on the TM you’re registering. Your Trademark Attorney will ask for it before application submission.    

Conclusion

In this article, we have gone in-depth into the question of can a person own a trademark for a company, when the company itself should own it, etc. But regardless of who should own a TM, can a person own a trademark for a company etc, going for TM registration is very important. A Trademark is a valuable asset for any Company, there are considerable advantages of Trademark registration and businesses can get a lot of profit from that asset. Trademark ownership, individual or company based, is extremely important to protect one’s brand name.

Additionally, if a company provides more than one product or service, it’s important to register them as well, that too under all the classes in which products or services fall. So, if you’re wondering should I trademark my name, the answer is a definite ‘yes’. Trademark registration can however take some time, hence, it’s very important to take the help of legal professionals like LegalWiz.in, to help you navigate through it seamlessly and quickly.