Trademark Assignment & Transfer

An assignment permanently transfers ownership of the trademark from the assignor to the assignee, extinguishing the assignor's rights entirely (or partially in the case of a partial assignment). A licence, governed by Section 48 of the Trade Marks Act, 1999, grants permission to use the mark without transferring ownership. The licensor retains title and the licence may be exclusive or non-exclusive, for a fixed term or perpetual, and subject to quality control conditions. If you intend to sell or permanently transfer your brand, an assignment is required.

The assignment deed itself creates a valid contractual obligation between the parties upon execution, but the change of ownership is not recognised by the Registry or enforceable against third parties until Form TM-P is filed and the assignment is recorded. Section 45 of the Trade Marks Act requires the assignee to apply for registration of the title within the prescribed period. Without recordal, the assignee may face difficulties enforcing the mark, filing oppositions, or relying on the mark in infringement proceedings.

The current prescribed fee for filing Form TM-P to record an assignment is INR 10,000 per trademark per class when filed electronically through the IP India online portal. Physical filing attracts a higher fee. If the trademark is registered in multiple classes, a separate TM-P and fee is payable for each class. The fee schedule is set under the Trade Marks Rules, 2017 and may be revised by the government from time to time.

Yes. Section 39 of the Trade Marks Act, 1999 expressly permits the assignment of a trademark application that has been filed but not yet granted registration. The process is similar to assigning a registered mark, and Form TM-P must be filed to record the change of applicant. The assignee steps into the shoes of the original applicant and prosecution of the application continues under the new owner's name. This is common in startup acquisitions where brands are still in the registration pipeline.

Under Rule 68 of the Trade Marks Rules, 2017, the application to register title following an assignment should be made within six months of the date of acquisition of the trademark. While missing this deadline does not invalidate the assignment itself, it may affect the Registry's processing and the assignee's ability to establish priority. In practice, earlier filing is strongly advisable to ensure continuous, uninterrupted recorded ownership.

Stamp duty on a trademark assignment deed is governed by the Stamp Act of the state in which the deed is executed, not by a central Act. The applicable rate varies by state and is typically calculated as a percentage of the consideration stated in the deed. For example, in Maharashtra the instrument of transfer is subject to stamp duty under Article 25 of Schedule I to the Maharashtra Stamp Act. It is essential to have the deed properly adjudicated or e-stamped to avoid it being treated as inadmissible in evidence in any future dispute.

Yes. Indian trademarks can be assigned to foreign companies or non-resident individuals. There are no restrictions under the Trade Marks Act, 1999 on the nationality or residence of the assignee. However, if any consideration flows from India to a foreign assignor, or if the assignment is part of a larger cross-border transaction, compliance with FEMA, 1999 and RBI regulations on outward remittances and foreign asset transfers must be ensured. Taxation of the consideration in India must also be assessed under the Income Tax Act, 1961 and the applicable double tax treaty.

Existing registered user or licence agreements do not automatically terminate upon assignment of the trademark. The assignee steps into the role of licensor and the licence continues on its existing terms unless the assignment deed or the licence agreement provides otherwise. If the assignee does not wish to continue existing licences, they must serve appropriate notices in accordance with the licence terms. It is critical to review all existing licence and co-existence agreements before completing an assignment to understand the obligations inherited by the assignee.

No. Recording the assignment via Form TM-P updates the Trade Marks Register to reflect the new ownership. The original registration number and filing date are preserved, and the assignee benefits from the same priority date as the original applicant. The Trade Marks Registry issues an updated registration certificate showing the assignee as the new proprietor. No fresh application for registration is required unless the assignee wishes to expand coverage to additional goods, services, or classes not covered by the original registration.