22 August 2014

Trademark – Assignment not registered before dissolution of assignee-company deemed as removed

Assignment of trademark should be registered within a reasonable period and if the trademark is not so registered before dissolution of the assignor company, the mark is deemed to have been removed or rectified from the Registry of Trademarks. Holding thus, while allowing the rectification application in respect of mark US PRO, the Intellectual Property Appellate Board, placing reliance of various precedents, also held that assignment deeds which are not registered as required Section 45 of the Trademarks Act, 1999 cannot be used as evidence. It was noted that principles applicable in infringement proceedings are also applicable in proceedings relating to rectification.

The Board by its order dated 10-7-2014 in the case of Montfort Services SDN BHD also observed that merely because there is no prescribed period of limitation, the assignee cannot sleep over the matter. It upheld the contention that adoption of the said trademark under Class 25 by the respondents was dishonest. Further, noting various infirmities in the assignment documents, including the fact that the deed was executed on 11-3-2008 on non-judicial stamp paper purchased from the State of Uttar Pradesh on 4-7-2014; absence of attestation of any witness or notary; absence of name of the person signing the deed, etc., the IPAB held that the so-called assignment deeds were not on the basis of established procedure of law and hence were not validly executed.


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