Trademark Assignment

Trademark Assignment: complete guide

Introduction

A trademark assignment is the transfer of ownership of a trademark from one person to another. The current owner, called the assignor, transfers its rights in the mark to the new owner, called the assignee, through a written deed of assignment. Under the Trade Marks Act, 1999, both registered and unregistered trademarks can be assigned, either with or without the goodwill of the business, and either for all the goods or services covered by the mark or only some of them.

Assignments happen for many reasons. A founder who registered the brand in their personal name may need to transfer it to the company before fundraising. A business may sell a product line together with its brand. Group companies may move trademarks into a holding or IP company. Partners may reorganise a firm. A business may be acquired, merged or restructured. In each case, the legal owner of the mark must change, and the change must be recorded properly.

An assignment has two parts. The first is the contract between the parties, which is the deed of assignment. It must be in writing, identify the mark and the goods or services covered, state whether goodwill is transferred, and record the consideration and other terms. The second is the recording of the assignment with the Trade Marks Registry. Under Section 45 of the Act, a person who becomes entitled to a registered trademark by assignment must apply to the Registrar to register their title. Until the assignment is recorded, the Registry will continue to show the assignor as the owner, and under Section 45(3), an unregistered document of assignment generally cannot be admitted as evidence of title in proceedings, except where the Registrar or the court directs otherwise.

Assignments look straightforward but raise several legal and practical questions: whether goodwill should be included, whether the assignment of only some goods or services is permitted without creating confusion, whether associated marks must be assigned together, what stamp duty applies to the deed, and whether advertisement of the assignment is needed for assignments without goodwill. Our team drafts the deed, advises on stamp duty and structure, files the request to record the assignment, and follows it through until the Registry records the new owner.

This page explains who needs a trademark assignment, the types of assignment, the legal requirements, the step-by-step process, the documents needed, timelines, our fee, common mistakes and what happens after the assignment is recorded.

Who Needs It

A trademark assignment is needed whenever ownership of a mark must change hands. Common situations include:

• Founders transferring the brand to their company. Many startups file the trademark in a founder's name before incorporation. Investors usually require the mark to be owned by the company.
• Proprietors converting to a company or LLP. When a sole proprietorship or partnership firm becomes a private limited company or LLP, the trademarks should be transferred to the new entity.
• Sale of a business or brand. When a business or a specific product line is sold, its trademarks are usually assigned along with goodwill.
• Mergers, demergers and group restructuring. Group companies often move marks to a single entity or to the entity that uses them.
• Partners leaving a firm. Where a firm's mark is held in the names of individual partners, an assignment may be needed when the partnership changes.
• Family succession and settlements. Marks owned by individuals may need to be transferred to family members or family businesses.
• Licensing businesses that buy the mark outright. A licensee that has been using a mark may acquire it from the owner.
• Settlement of disputes. Trademark disputes are sometimes resolved by one party assigning its mark to the other.

If the business owner's name or address has changed but the owner is the same legal person, an assignment is not needed. A request to amend the owner's details is filed instead.

Key Benefits

• Clear legal ownership. The assignee becomes the legal owner of the mark and can use, license, enforce and renew it in its own name.
• Recorded title. Once the Registry records the assignment, the register shows the new owner, which is essential for enforcement and due diligence.
• Enforcement rights. A recorded owner can file oppositions, send notices and bring infringement actions without title disputes.
• Investor and acquirer comfort. Investors and buyers expect brands to be owned by the business, supported by a recorded assignment.
• Commercial value. A well-drafted assignment captures the value of the brand and its goodwill, which can be important for tax, accounting and valuation purposes.
• Flexibility. The Act permits assignment with or without goodwill, and for all or some of the goods or services, so the transfer can match the commercial deal.

Assignment with goodwill or without goodwill. An assignment with goodwill transfers both the mark and the business reputation associated with it, so the assignee steps fully into the assignor's shoes for those goods or services. An assignment without goodwill transfers only the right to use the mark, and the assignor may continue to carry on the underlying business without the mark. Under Section 42, where a mark is assigned without the goodwill of a business in which it has been used, the assignment takes effect only if the assignee applies to the Registrar for directions with respect to advertisement within the prescribed time and advertises the assignment as directed. This requirement does not apply to an assignment made with the goodwill, or for goods for which the mark has not been used.

Assignment or licence: how they differ. An assignment transfers ownership permanently. A licence allows another person to use the mark while the owner keeps ownership. If the brand owner wants to keep control, a licence or registered user arrangement is usually more suitable. If the brand must belong to a new entity, an assignment is needed.

Eligibility and Legal Requirements

The key legal requirements for assigning a trademark in India are:

• Who can assign. The registered proprietor, or the owner of an unregistered mark, can assign it. Under Section 37, the person entered on the register as proprietor has power to assign the mark, subject to the provisions of the Act and any rights recorded on the register.
• Registered and unregistered marks. Under Section 38 and Section 39, both registered and unregistered marks are assignable, with or without goodwill.
• Partial assignment. A mark may be assigned for some of the goods or services for which it is registered. Under Section 40, the assignment is not permitted if, as a result, more than one person would have exclusive rights to use identical or similar marks for the same or associated goods in a way likely to deceive or cause confusion.
• Territorial limits. Under Section 41, an assignment that would give different persons exclusive rights in different parts of India may be restricted, subject to the Registrar's approval in some circumstances.
• Associated marks. Marks entered as associated with each other on the register are assignable only as a whole and not separately, although they continue to be treated as separate marks for other purposes.
• Written deed. The assignment must be in writing, signed by the parties, and should identify the mark, application or registration number, class, goods or services, whether goodwill is transferred, the consideration and the effective date.
• Stamp duty. The deed must be stamped as required by the stamp law of the relevant state. Stamp duty varies by state and may depend on the consideration. Stamp duty is payable at actual.
• Recording with the Registry. Under Section 45, the assignee must apply to the Registrar in the prescribed form, currently Form TM-P, with the deed and fee, to register its title. For a pending application, the request to record the assignment is filed in the same manner.
• Advertisement for assignment without goodwill. Under Section 42, for an assignment without goodwill of a mark in use, the assignee must apply for directions on advertisement within the time prescribed by the rules and advertise as directed.
• Government fee. The official fee for recording the assignment depends on the form and the timing of the request, and is payable at actual.

Rules, forms and stamp duty rates change from time to time. We check the current position at the time of drafting and filing.

Step-by-Step Guide

1. Understanding the transaction. We discuss who is assigning the mark, who is receiving it, why, whether the business or goodwill is also being transferred, and the consideration agreed.
2. Status check of the mark. We check the status of each mark on the register, including the recorded owner, classes, specification, any associated marks, pending oppositions, renewal dates and recorded licences.
3. Structuring advice. We advise on whether the assignment should be with or without goodwill, whether it should cover all or some goods or services, and whether any marks must be assigned together.
4. Drafting the deed of assignment. We draft a deed covering the parties, the marks, the goods and services, goodwill, consideration, representations and warranties, cooperation in recording, and governing law.
5. Review and finalisation. Both parties review the draft. We make any changes agreed between them.
6. Stamping. We advise on the stamp duty payable in the relevant state, and the deed is stamped before or at the time of execution as the state law requires.
7. Execution. The deed is signed by the authorised signatories of both parties, in the presence of witnesses where appropriate. Board resolutions or partner consents are obtained where needed.
8. Filing to record the assignment. We prepare and file Form TM-P with the Trade Marks Registry, along with the stamped and signed deed, the authority documents and the government fee at actual.
9. Advertisement where required. For an assignment without goodwill of a mark in use, we file the request for directions on advertisement within the prescribed time and arrange the advertisement as directed.
10. Follow-up and confirmation. We track the request and reply to any query from the Registry. Once the assignment is recorded, the register shows the assignee as proprietor, and we share the updated record with you.

Documents Checklist

Trademark details:

• Application or registration numbers, classes and specifications of the marks to be assigned
• Copies of registration certificates, where issued
• Details of any associated marks, licences or pending proceedings

For an individual assignor or assignee:

• PAN and Aadhaar or other identity and address proof
• Signature on the deed and on any power of attorney

For a company or LLP:

• Certificate of incorporation and PAN
• Board resolution or partners' resolution approving the assignment and authorising the signatory
• Identity proof of the authorised signatory

For a partnership firm:

• Partnership deed
• Consent of all partners, or an authorisation in line with the deed
• PAN of the firm

Transaction documents:

• The agreed commercial terms, such as consideration and effective date
• Business transfer agreement or share purchase agreement, if the assignment is part of a larger transaction

For filing:

• Signed power of attorney in Form TM-48 in favour of our filing professional
• Stamped and executed deed of assignment

How Long It Takes

• Status check and structuring advice: one to two working days.
• Drafting the deed: usually two to four working days, depending on the number of marks and the complexity of the transaction.
• Stamping and execution: depends on the parties' availability and the state's stamping process, commonly a few working days.
• Filing with the Registry: within one to two working days after receiving the executed deed.
• Registry recording: the time taken by the Registry to record the assignment varies with its workload and whether any query is raised, and can range from a few weeks to several months.
• Advertisement, where required: adds time, depending on the directions given by the Registrar and the publication schedule.

Pricing

Our professional fee for Trademark Assignment is ₹ 4,999.

This covers:

• Status check of the mark on the register
• Advice on structure, including goodwill and partial assignment
• Drafting of the deed of assignment for one mark
• Guidance on stamp duty and execution
• Preparation and filing of Form TM-P and the power of attorney
• Tracking the request and replying to Registry queries on it
• Sharing the updated register record once the assignment is recorded

Stamp duty on the deed and the government fee for recording the assignment are payable at actual. Additional marks, advertisement of assignments without goodwill, complex business transfer documentation and international assignments are quoted separately.

Common Mistakes to Avoid

• Not recording the assignment. A deed that is not recorded with the Registry leaves the old owner on the register and can create problems in proving title.
• Unstamped or under-stamped deeds. A deed that is not properly stamped may not be admissible as evidence and may attract penalties under the stamp law.
• Vague identification of marks. The deed must list the marks, numbers, classes and goods or services clearly.
• Ignoring associated marks. Associated marks must be assigned together. Assigning only one may be refused.
• Missing the advertisement step. For an assignment without goodwill of a mark in use, failing to apply for directions and advertise in time can affect the validity of the assignment.
• Partial assignments that create confusion. Splitting a mark between two owners for similar goods may be refused under Section 40.
• Not checking pending proceedings. Oppositions, rectifications and licences on the mark should be considered before the deal is signed.
• Using the wrong form for a name change. If the owner is the same legal person and only its name has changed, a request to amend details is the correct route, not an assignment.
• Overlooking renewal dates. Make sure the mark is renewed and in force at the time of assignment.

What Happens After

After the assignment is recorded:

• Update your records. Keep the stamped deed, the filing acknowledgement and the updated register extract safely, as they are evidence of title.
• Use the mark in the assignee's name. Packaging, invoices, websites and marketing material should reflect the new owner where relevant.
• Update licences. Existing licences should be reviewed, and new licences granted by the assignee should be in writing.
• Manage renewals. Renewal reminders and future filings will now be in the assignee's name.
• Update online listings. Brand registry programmes on marketplaces and domain registrations may need to be updated to reflect the new owner.
• Continue enforcement. The assignee can now oppose conflicting marks and act against infringers in its own name.
• Assign foreign registrations. If the mark is registered abroad, separate assignments may need to be recorded in each country or through the international register.

Our team can help with licensing agreements, renewals, oppositions and foreign assignments.

FAQs

What is a trademark assignment?

It is the transfer of ownership of a trademark from the current owner to a new owner, through a written deed, followed by recording the transfer with the Trade Marks Registry.

Can an unregistered or pending trademark be assigned?

Yes. Both registered and unregistered marks can be assigned, and a pending application can be assigned and the change recorded with the Registry.

Is it mandatory to record the assignment with the Registry?

The Act requires the assignee to apply to register its title. Until it is recorded, the register shows the old owner, and an unregistered assignment generally cannot be used as evidence of title in proceedings without the Registrar's or the court's direction.

What is the difference between assignment with and without goodwill?

With goodwill, the mark is transferred along with the reputation of the business it represents. Without goodwill, only the right to the mark is transferred, and advertisement of the assignment is needed for marks in use.

Can I assign a trademark for only some products?

Yes, a partial assignment is possible, unless it would result in more than one person having exclusive rights to identical or similar marks for the same or associated goods in a way likely to cause confusion.

Is stamp duty payable on a trademark assignment deed?

Yes. Stamp duty is payable as per the stamp law of the relevant state and may depend on the consideration. It is payable at actual.

Which form is used to record an assignment?

Under the Trade Marks Rules, 2017, the request to record an assignment is filed in Form TM-P with the deed and the government fee.

Can I transfer my trademark from my name to my company?

Yes. This is one of the most common assignments. A deed between you and the company is executed and recorded with the Registry.

My business name changed. Do I need an assignment?

No, if the owner is the same legal person and only its name has changed, a request to amend the proprietor's details is filed instead.

How long does it take for the Registry to record the assignment?

It varies with the Registry's workload and any queries raised. It can range from a few weeks to several months.

Does the assignment affect the registration date?

No. The mark keeps its original filing and registration dates. Only the owner changes.

Can a trademark be assigned to a foreign company?

Yes. A trademark can be assigned to a foreign entity, subject to the Act and any applicable foreign exchange and tax rules. The foreign assignee must give an address for service in India.

What happens if the assignor refuses to cooperate after signing?

If the deed is properly executed and stamped, the assignee can usually file the request on its own. A cooperation clause in the deed helps avoid disputes.

Related Trademark & IP services

• Trademark Infringement
• Trademark Registration
• Trademark Renewal
• Trademark Watch