Looking to the backlog of matters pending for post registration changes, the Indian Trademark Registry has taken an initiative to start a special drive during the months of December 2013 and January 2014, for the disposal of recordal of post registration changes requests. This drive will also concern itself with trademark assignments, which have taken place, but are awaiting recordal with the Registrar.
Hereunder is a list of different forms with their utility, which will be taken up under this notification:
- TM-17: Applications for the certificates of the Registrar under Section 40(2) with reference to proposed assignment of registered trademarks, rule 77.
- TM-19: Applications for the approval by the Registrar under Section 41 of proposed assignment, or of transmission of a trademark, resulting in exclusive rights in different persons for different parts of India, rule 77.
- TM-20: Applications for directions for the advertisement of assignments of trade marks otherwise than in connection with the goodwill of businesses. Section 42, rule 74(1)
- TM-23: Joint requests by registered proprietors and transferees to register transferees as subsequent proprietors of trademarks upon devolution of title. Section 45, rule 68.
- TM-24: Requests to register subsequent proprietors of trademarks upon devolution of title. Section 45, rule 68.
- TM-33: Requests to enter changes of names or descriptions of registered proprietors (or registered users) of trademarks, upon the Register. Section 58, rules 91 & 97.
- TM-34: Requests for alteration of the addresses of the principal places of businesses or of residences in India or the addresses in the home countries in the Register of Trade Marks. Section 58, rules 91, 96 & 97.
- TM-35: Applications by registered proprietors of trademarks for cancellation of entries thereof in the register. Section 58 (1)(c), rule 97.
- TM-36: Applications by registered proprietors of trademarks to strike out goods or services from those for which the trademarks are registered. Section 58(1) (d), rule 97.
- TM-38: Applications by registered proprietors under section 59(1) for addition to or alteration of registered trademarks, rule 98.
To avoid confusion amongst the proprietors/owners, the Trademark Registry explained that matters shall be taken up in the order of registered trademark numbers and in the case of a single request for more than one registered trademark in an application, the registration number of the first mark mentioned shall be considered.
The Registry has given further clarification that, in case any request involves more than one jurisdiction then it shall be looked into by the office having jurisdiction with respect to the first trademark mentioned in the request.
The concerned Proprietors/authorized agents are required to appear before the appropriate officer with the following documents:
- A statement of case indicating sequence of changes relating to the registered trademark(s);
- An authentic copy of all the requests for recordal of post registration changes (along with fee receipt), if any, which has not been brought on record;
- An authentic copy of the assignment deed or the document on the basis of which the change is requested;
- An affidavit to the effect that no litigation is pending in respect of the assignment/transmission mentioned in the request and
- An authentic copy of the latest PA/GPA in favour of the agent.
A list of concerned officers authorized to deal with the applications covered under the notification has been published on 25 November, 2013. The applications have been allotted to the Ahmedabad, Chennai, Delhi,Kolkata and Mumbai jurisdictions. The Trademark Registry has also stated that no separate hearing notice will be issued to the proprietors or their authorized agents who are covered under this notification.
