Trademark Assignment & Trademark Ownership Transfer Services

Trademark assignment is the permanent transfer of rights in trademark, title and interest in a trademark to another person or entity. Section 2(1)(b) of the Trade Marks Act, 1999 defines assignment as a transfer that is made in writing by the act of concerned parties as an oral handover is not enough. Current owner who is also known as the assignor, passes on the ownership to the new owner (assignee), who then takes over the rights of title.

The trademark assignment can be structured in a few ways. You may proceed with an assignment of trademark with goodwill, and let the assignee use that for the same good or services you did, or without the goodwill, where the assignee gets only the mark and you have the right to use a different brand for similar products. You also have the right to either assign the whole mark or a part of it by splitting the goods, services or the territory that it covers. Both registered marks (Section 38) and unregistered marks that have built reputation can be assigned in this way.

If you ever want to change the ownership of a brand, then you rely on trademark assignment. If you are selling a business, transferring a mark from your personal name to your company name, bringing a new investor, or reorganizing group companies after a merger, trademark assignment is something that makes the new ownership enforceable against everyone else, not just between you and the other party.

You cannot prove that you own the mark without a properly executed and recorded assignment if any dispute comes up later, and you also cannot stop others from using it. When you record your trademark assignment with Registrar, it also updates the public Registrar of Trade Marks, so that your ownership is on record and can be searched by anyone checking the mark’s status.

Trademark assignment has the following benefits:

• You get to unlock the commercial value of your brand by selling or transferring it, instead of keeping it unused.

• A trusted mark helps you to gain instant recognition and customers’ trust, while Trademark Protection preserve the value of acquired brand.

• You acquire a clear, written record of ownership that helps you to enforce your rights if someone violates the mark.

• You can restructure your holdings smoothly, which moves the mark between group entities during a merger or demerger.

• Your business remains flexible, as it is in your hands to assign the whole mark, a part of it or limit it to some goods, services or regions.

Before starting with the trademark assignment, you can check if you meet the basic requirements:

• You must have an existing trademark, whether it is registered with Trade Marks Registry or unregistered but is in commercial use.

• Clear ownership must be on your side, with zero unresolved disputes over the mark’s title.

• You must have a written, signed assignment deed between you and the other party, as an oral transfer has no legal effect.

• Compliance with the restrictions mentioned in Sections 40 and 41 of the Trade Marks Act, 1999, as this will save you from any kind of confusion or overlapping rights for the same or similar goods in different hands.

• If you are assigning the mark without goodwill, then an advertisement of the transfer is must as per Section 42.

Trade Marks Registry, functioning under the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), Ministry of Commerce and Industry, is the main authority that records the trademark assignment. You must file your application with the Registrar who has the jurisdiction over your mark, and the Registrar examines it under Chapter V (Sections 37 to 45) of the Trade Marks Act, 1999 before updating the Register.

You must keep the following trademark assignment document ready before you approach the Registrar:

Trademark Assignment Agreement

You must have a properly signed and stamped trademark assignment agreement, that sets the mark, the parties and the scope of transfer

Trademark Registration Certificate

You must have certified copy of the trademark registration certificate, or proof of use for an unregistered mark.

Identity and Address Proof

You need an identity and the address proof for both, you and the other party to the transfer.

Authorisation Letter

A board resolution or authorisation letter is must, where either party is a company.

Power of Attorney

A power of attorney (Form TM-48), is required if you are filling through an agent or attorney.

Proof of Advertisement

You must present the proof of advertisement, where the assignment is without goodwill and the Registrar has directed one

The trademark assignment undergoes a set of steps as follows:

Step 1: Draft the Assignment Deed

You and the other party first agree on the mark, consideration, whether the goodwill is included, and the effective date, then sign the trademark transfer agreement and get it stamped.

Step 2: Gather the supporting documents

You must collect the registration certificate, identity proof, authorisations and board resolutions (if any).

Step 3: File Form TM-P with the Registrar

You and the assignee, both can jointly file the application to record the change of proprietorship.

Step 4: Complete the Advertisement Process

You can complete the step of advertisement, if required. Where you are mainly assigning without goodwill, you apply to the Registrar for directions and publish the advertisement as directed under Section 42.

Step 5: Registrar’s Examination

The Registrar checks if your application meets the restrictions under Sections 40 to 42 and if your documents are in order, and they may raise objections if something is missing.

Step 6: Updating the Registration Certificate

After being satisfied, the Registrar will then update the registration certificate to reflect the assignee as the new registered proprietor

The trademark assignment process should be completed within six months from the time you sign the deed, as Form TM-P must be filed within this timeline. If you need an extension of this period, then you can always ask for the Registrar’s approval.

The total cost for trademark assignment in India has two major parts. One is the official government fees for filing the TM-P, and the professional fee for drafting the deed, preparing the filing and handling the Registrar's queries on your behalf. If your assignment is without a goodwill, then a separate fee will be charged for Section 42 advertisement direction.

Note: The table above mainly shows the professional fees. Government fees vary based on the number of marks, the class of applicant and the periodic revision by the Registry, so our consultants will discuss the current cost with you. The stamp duty fees on your deed also differs by state and are payable separately.

There is no fixed penalty if you get delayed in your trademark assignment filing, but there may be consequences that can cost you. If you don't record the transfer within the given time period, then you may have to apply for an extension and justify the delay to the Registrar. More importantly, an unrecorded assignment is not enforceable against third parties, so if a dispute or violation comes up before your record it, then you could struggle to prove your ownership in court before the Registrar

Once the Registrar records the trademark assignment, you receive an updated registration certificate that shows you as the new registered proprietor. Before you execute the deed, Section 37(2) allows you to apply for a certificate from the Registrar that confirms whether your proposed assignment would be valid under the Act’s restrictions, which is a useful safeguard before you do the transaction.

The validity of your trademark assignment does not expire itself once it's recorded, the change of ownership is a permanent event. However, the underlying trademark registration needs periodic attention, which you as the new proprietor, must renew in every ten years under Section 25 of the Act so that the mark remains protected. The assignment record carries forward with each renewal.

After your Trademark assignment is recorded, there are a few responsibilities that falls on you as the new owner:

• You must remember to renew the trademark registration before it lapses, as non-renewal can result in removal from Register.

• Mark must be in active genuine commercial use, as non-use for five years and three months can lead to rectification or cancellation of mark under Section 47.

• Update licensing, franchise, or distribution agreements that were referred to the previous owner.

• Keep your address for service and contact details current with the registry.

If you come across any error in the details that are recorded, such as a misspelt name or an incorrect address, then you can apply to the Registrar for a correction. If the error is major then you may need to file a rectification application under Section 57 of the Act. We recommend you to review your Form TM-P entry carefully once it is processed, so any amendment is caught and corrected at the earliest.

No, you don’t need to renew the trademark assignment. However, you must complete the Trademark renewal on a ten year cycle that you now hold as the assignee. The assignment is a one time change of ownership on a record that stays alive through regular renewal.

A trademark assignment is not something that you can surrender as you do for a licence. Instead, once the trademark is recorded in your name as you being the proprietor, then you choose to surrender the underlying trademark registration, in respect of some or all the goods and services, but writing it to the Registrar. If the trademark assignment has breached Sections 40 or 41 restrictions, then the affected party can challenge it through a rectification application rather than a surrender.

There are several reasons for which your Trademark assignment application may be rejected:

• An unstamped or improperly stamped assignment deed can lead to rejection of the application.

• Missing or inconsistent details between the deed and existing trademark registration.

• If you fill the Form TM-P after the six month window without getting an extension then it may lead to rejection of the application.

• Skipping the mandatory advertisement if the assignment is without goodwill.

• The transfer creates overlapping exclusive rights that breach Sections 40 or 41.

• A pending dispute over who actually owns the mark.

• Incomplete identity proof, authorisation or Power of Attorney for the filing agent.

We offer services related to trademark assignment for various states in India, such as Delhi, Maharashtra, Karnataka, Tamil Nadu, Gujarat, Uttar Pradesh, Rajasthan, West Bengal, Telangana, and Andhra Pradesh. Although the procedure of filing is done centrally at the Trade Marks Registry, the stamp duty on your deed depends on your state, and we will keep you updated on the applicable rate for your location.

Our trademark assignment services are available in any industry that you may be engaged in, such as:

• FMCG and food and beverage

• Fashion, apparel and retail

• IT, software and e-commerce

• Pharmaceuticals and healthcare

• Manufacturing and Engineering

• Education and hospitality

The process of trademark assignment becomes easy when you use the services of Brandregistration.co.in. We draft your assignment agreement, fill your Form TM-P, and see it through the Registrar's examination, including the advertisement step if required. We update you at each stage, so you always know the status of your filing, and our team take immediate action if the Registrar objects to it. With our assistance, you can complete the trademark transfer accurately and without an unnecessary delay.