Trademark Assignment & Transfer

What is Trademark Assignment & Transfer?

Trademark assignment is the legal transfer of ownership of a registered or pending trademark from one party to another. Whether you are selling your brand, restructuring your business, or transferring IP assets as part of an acquisition, a properly executed assignment deed and TM-P filing with the Trade Marks Registry is essential to protect both parties.

Trademark assignment is the process by which the owner of a trademark, referred to as the assignor, transfers all or part of the rights in that trademark to another person or entity, known as the assignee. In India, this process is governed by the Trade Marks Act, 1999, specifically Sections 37 to 45, which lay down the conditions, restrictions, and procedural requirements for a valid assignment. The Trade Marks Registry, operating under the Office of the Controller General of Patents, Designs and Trade Marks, is the statutory authority responsible for recording such assignments and updating the register accordingly. A trademark can be assigned with or without the goodwill of the business associated with it. An assignment with goodwill transfers the right to use the mark along with the business reputation it represents, while an assignment without goodwill transfers only the bare trademark right, permitting the assignee to use it for goods or services not previously associated with the assignor. The Act also distinguishes between partial assignments, which cover only specific goods or services within the class, and total assignments, which transfer all rights in the mark across all registered classes. The assignment must be effected through a written instrument, typically called an Assignment Deed or Agreement. This document must be duly signed by both parties, properly witnessed, and where applicable, notarised or adjudicated for stamp duty purposes under the relevant State Stamp Act. The stamp duty payable varies by state and by the consideration amount stated in the deed. Errors in the deed, such as incorrect trademark numbers, misspelled party names, or omission of the effective date, can cause rejection of the application at the Registry and significant delays. Once the deed is executed, the assignee must file Form TM-P with the Trade Marks Registry within six months of the date of acquisition of the trademark. The prescribed government filing fee is currently INR 10,000 per trademark per class when filed electronically. If the assignment involves multiple classes, a separate form and fee are required for each class. Failure to file within six months does not invalidate the assignment itself but may affect the assignee's ability to assert priority in disputes. The Registry examines the application and may raise objections, including requests for certified copies of the deed, clarifications on the nature of the assignment, or proof of the assignor's title. Responding to these objections promptly and accurately is critical. Once satisfied, the Registrar records the assignment and issues an updated certificate of registration in the assignee's name. The process typically takes between six and eighteen months depending on the Registry's workload and the accuracy of the initial filing. Common mistakes in trademark assignment include failing to obtain a proper valuation of the trademark for tax purposes, neglecting to check whether the mark is subject to any existing licences or encumbrances that must be disclosed or terminated before transfer, and omitting to update related agreements such as domain name registrations, packaging, or commercial contracts that reference the old owner. From a tax perspective, the transfer of a trademark may attract capital gains tax in the hands of the assignor, and the classification of the trademark as a capital asset under the Income Tax Act, 1961 must be correctly assessed. For startups and businesses undergoing acquisition or merger, trademark assignment is frequently a pre-condition to closing. Acquirers conduct IP due diligence to confirm that all registered marks are validly assigned, free of disputes, and recorded at the Registry. Any gap in the chain of title can delay or derail a transaction. Expert assistance ensures that the deed is correctly drafted, stamp duty is properly adjudicated, the Registry filing is complete and timely, and all ancillary matters such as recorded licences and co-existence agreements are addressed. Professional guidance also helps parties understand the tax implications and structure the consideration in a tax-efficient manner.

How It Works

1. 1

   Due Diligence and Verification

   We retrieve the current status of the trademark from the IP India database, verify ownership, check for existing licences or encumbrances, and confirm all renewal fees are paid before proceeding.

2. 2

   Drafting the Assignment Deed

   We draft the Assignment Deed specifying the nature of assignment (with or without goodwill, total or partial), the consideration, effective date, representations and warranties, and indemnity clauses to protect both parties.

3. 3

   Stamp Duty Adjudication

   We advise on the applicable stamp duty under the relevant State Stamp Act based on the consideration amount and arrange adjudication or e-stamping of the deed before execution.

4. 4

   Execution and Notarisation

   Both parties execute the deed with witnesses. Where required, the deed is notarised or attested. Certified copies are prepared for Registry filing.

5. 5

   Filing Form TM-P

   We prepare and file Form TM-P with the Trade Marks Registry along with the government fee of INR 10,000 per class per trademark, copies of the deed, and supporting documents.

6. 6

   Registry Examination and Recording

   We monitor the application, respond to any examination objections, and track the Registry's recording of the assignment. Once recorded, we obtain the updated certificate in the assignee's name.

Government Fees

Professional Fees