In this innovation series, we have covered essential aspects of patents and intellectual property for startups. This article is an attempt to dive into the integrities and headaches involved in transfer and ownership issues of Intellectual Property Rights. At once you might think why it is relevant for start-ups or mid-sized firm as these problems occur in mergers and acquisitions of big corporate. Well, so not true!Let us start with the most trivial case.
Partnership to Private Limited: Did you start your firm as a partnership firm and now have converted it to a private limited? If yes, did you also transfer your trademark to the private limited entity (if applied for or registered). Some people think that assets and liabilities were transferred through the transfer agreement, thus trademark is also covered under goodwill. You are partially right but Trademark Act of India suggests following trademark assignment transfer procedure under Article 42 of the Act other than the automatic goodwill transfer. Also, it is advisable to register assignment of all patents with the patent office for future litigation and tax purposes, otherwise getting signatures of partners who are long gone apart is a nightmare.
Manufacturer’s Name: Many times in manufacturing, a firm forms two companies: one for retail, marketing, and branding, and other for manufacturing. In such cases, the CEOs are excited to keep brand name of the whole setup with the retail firm while keeping manufacturing unit as different. This might lead them with two issues: one is using brand name of retail firm in the manufacturing without authorized permissions. Secondly, under the radar of excise and custom taxes, the manufacturing company will be found to be illegally using brand name of the manufacturing firm in absence of correct licenses or transfer of trademarks.
These are few examples that you have to think through hard.
INNOVACCER (Innovation Accelerated) is an innovation management and acceleration company focused and dedicated to provide high quality innovation management services to accelerate every step of an innovation life-cycle. InnovAccer was founded with a vision of people in the fields of Intellectual Property, Business Innovation, and Technology to change and accelerate the creation of innovation ecosystem inIndia. InnovAccer’s team comes from a varied background of engineers graduated from IITs, intellectual property specialists graduated fromFranklin Pierce Law Center,USA, analysts, statisticians, and business innovation experts.www.innovaccer.com