When a proprietor transfers the proprietorship of a trademark to other party whether along with or without the goodwill of the business, assignment of a trademark takes place.
As a standard practice in trademarks, there are two types of assignment: Assignment of an application and Assignment of a registration. Unlike trademark assignment in different countries, in Nepal an application cannot be assigned. Therefore, assignment of registration is only possible.
- Registration assignment must be made for the entire territory covered by the registration.
- Registration assignment must be for all of the goods or services listed in the registration.
- Goodwill need not be included in an assignment of a registration. Goodwill in a trademark is not recognized separately from its registration and is transferred/assigned on the assignment of the trademark.
Provisions concerning assignment of trademark are listed under Section 21D of the Act.
- Request for assignment (change of ownership) has to be made in writing to the Department.
- Both the interested parties have to file a joint application, stating the facts, along with the payment of the prescribed fee.
Documentary Requirements for Trademark Assignment
- Name and address of the assignee
- Name and address of the assignor
- Citizenship of assignor and the assignee (if any of them is an individual).
- Details of the trademark being assigned
- goods and services being assigned
- signature by assignor and the assignee.
- Deed of assignment
- Legal verification of a written assignment document is required by witnesses, company seal or rubber stamp, notarization or legalization is optional. However, if any of the parties involves does not have a rubber stamp or company seal then the deed of assignment must be notarized.
- Duly executed power of attorney.
- Original Nepalese Registration Certificate.
An assignment of a registration must be recorded to be effective.
An application must be filed before the Registrar of Trademarks in Nepal with a perceived form along with a certified copy of the Deed of Assignment, POA and the prescribed fee.
Other Changes to Trademark Records
Recordal of name change, mergers and other corporate updates on trademark books shall require:
- power of attorney (A company seal or a rubber stamp is required. In absence of company seal or a rubber stamp, then the power of attorney must be notarized.)
- deed of assignment (A company seal or a rubber stamp is required. In absence of company seal or a rubber stamp, then the deed of assignment must be notarized.)
- certificate of proof of change of name (Certified copy issued by the respective regulatory agency of the applicant. If a certified copy cannot be issued, then the copy must be notarized.)
- certificate of merger (Certified copy issued by the respective regulatory agency of the applicant. If a certified copy cannot be issued, then the copy must be notarized.)
Recordal of updated addresses on trademark records shall require:
- Application for a change in the registered address of the registrant requires a certified/notarized copy of proof of change of address of the registrant issued by the respective regulatory agency of the applicant. This is subject to review by local counsel.