Trademark Assignment in India
Sections 38 to 45, Trade Marks Act, 1999 · Deed of assignment · Form TM-P
Trademark assignment transfers ownership of a registered or pending mark from one owner to another under Sections 38 to 45 of the Trade Marks Act, 1999, by a written deed. The new owner then applies on Form TM-P to be recorded as the subsequent proprietor (Section 45). Until the assignment is recorded, the register still shows the old owner, and an unrecorded deed is generally not admitted as proof of title.
- Reviewed by
- Registered Trade Marks Agent
- Last updated
- Due diligence first. Status, owner, oppositions and licences checked on the register.
- Deed drafted for India. Goodwill, classes, territory and related copyright covered.
- Recordal filed. Form TM-P with the deed, and Section 42 advertisement where needed.
- Portfolio tidied. Pending applications and renewals moved to the new owner too.
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Trademark assignment at a glance
- Law
- Sections 38 to 45, Trade Marks Act, 1999
- Document
- A written deed of assignment signed by the parties, stamped under state law
- Recordal
- Form TM-P, filed by the new owner with the Trade Marks Registry (Section 45)
- Without goodwill
- Apply for directions to advertise within six months of the assignment (Section 42)
- Covers
- Registered marks and pending applications, for all or some goods or services
What is a trademark assignment, and how is it different from a licence?
An assignment transfers ownership. After it, the assignee owns the mark, can renew it, license it, enforce it and sell it again. A licence only gives permission to use the mark while the owner keeps it. Choosing the wrong one is a common and expensive mistake: a business that “transfers” its brand to a group company by licence still has the brand on the old company’s balance sheet, and a buyer who takes only a licence has no right to sue infringers.
A registered mark can be assigned with or without the goodwill of the business, and for all or only some of the goods or services (Section 38). An unregistered mark can also be assigned, with or without goodwill (Section 39), although its value usually lies in the goodwill, so it is normally transferred with the business. Pending applications can be assigned, and the new owner should be substituted as the applicant on the record.
What kinds of trademark assignment are there?
| Type | What moves | Points to watch |
|---|---|---|
| With goodwill | The mark and the business reputation attached to it | The usual choice when a business or product line is sold |
| Without goodwill | The mark only, for goods or services the assignor keeps selling under other marks | Section 42 advertisement is required within six months, or the assignment does not take effect |
| Complete | All classes and all goods or services | The assignor keeps no rights in the mark |
| Partial | Some goods, services or classes only | Not allowed where it would leave two owners with confusingly similar rights (Section 40) |
| Unregistered mark | Rights built up through use | Allowed with or without goodwill (Section 39); proving title later depends on the deed and evidence of use |
How is a trademark assigned and recorded in India?
Step 1
Check the register
Confirm the registered owner, status, classes, renewal date and any oppositions, licences or registered users on record.
Step 2
Draft the deed
Identify every mark and application, the classes, whether goodwill passes, the consideration, warranties, and the related copyright in any logo.
Step 3
Sign and stamp
The parties sign the deed, and it is stamped as required by the stamp law of the state where it is executed.
Step 4
File Form TM-P
The new owner files Form TM-P with a copy of the deed, for each mark (Section 45).
Within 6 months, if needed
Advertise an assignment without goodwill
The assignee applies for the Registrar’s directions and advertises the assignment as directed (Section 42).
After approval
Register updated
The Registrar records the new owner. Future renewals, oppositions and correspondence follow the new owner.
What is the government fee to record a trademark assignment?
| Government fee | All applicants |
|---|---|
| Registering a subsequent proprietor after assignment or transmission (Section 45)Form TM-Pper mark· e-filing | ₹9,000 |
| Registering a subsequent proprietor after assignment or transmission (Section 45)Form TM-Pper mark· paper filing | ₹10,000 |
Government fees from Trade Marks Rules, 2017, First Schedule (IP India), as checked on . Statutory fees only; the firm's professional fee is quoted separately in writing.
Stamp duty on the deed is separate, set by state law and paid to the state, not to the Registry.
What documents are needed for a trademark assignment?
For the recordal
- The signed and stamped deed of assignment, or a certified copy
- Details of each registration or application being assigned
- Power of attorney on Form TM-48 from the new owner
- For companies and LLPs: authority of the signatories, such as a board resolution
Good practice, often overlooked
- A written assignment of copyright in the logo from the designer, and onward to the new owner
- Termination or transfer of existing licences
- An undertaking from the assignor to sign further documents if the Registry asks
- A list of renewal dates and pending deadlines for the new owner
Transfer the logo copyright as well
A logo is also an artistic work. If the deed moves the trademark but not the copyright in the artwork, the old owner, or the designer who never assigned it, may still own the copyright. Copyright assignments must be in writing (Section 19, Copyright Act, 1957). See copyright for artwork and logos.
Trademark assignment FAQs
Is it compulsory to record a trademark assignment?
The new owner is required to apply for recordal under Section 45. Until it is recorded, the register shows the old owner, and the unrecorded deed is generally not admitted as proof of title unless the Registrar or court directs otherwise.
Can a pending trademark application be assigned?
Yes. The assignee can be substituted as the applicant on the record, and the application continues in its name.
Who signs the deed of assignment?
Both parties: the assignor (current owner) and the assignee (new owner). For companies, the authorised signatory signs under a board resolution.
What happens to a trademark when a proprietorship becomes a company?
The mark stays with the proprietor personally until it is assigned to the company. Assign it by deed and record the change on Form TM-P, so that the company can renew and enforce it.
Can I assign my trademark for only one state?
Assignments that split rights by territory within India, so that different owners use the mark in different places, are restricted (Section 41) and usually need the Registrar’s approval.
Does an assignment affect the renewal date?
No. The registration keeps its original term. The new owner simply renews it when due, once recorded as proprietor.