A trademark is an intellectual property that, like any other asset, can be sold, licensed, or transferred by its owner. This transfer can happen through assignment or licensing.
In an assignment, ownership of the trademark changes either fully or partially. In contrast, in licensing, the original owner retains ownership while granting limited rights to another party.
Trademark assignment in India may include or exclude the business’s goodwill. For registered trademarks, any assignment must be officially recorded in the Trademark Register.
Advantages of Trademark Assignment
Unlock Value: A trademark assignment deed helps the brand owner realise the actual value of the brand, which may have only existed on paper until now. For the assignee, using an already recognised brand provides a better market entry than building a new brand from scratch.
Legal Proof: In case of disputes, the assignment deed serves as valid legal proof. The Registrar verifies all clauses in the trademark assignment deed before publishing the assignment in the Trade Marks Journal, ensuring proper checks.
Requirements for Trademark Assignment
Assets that Can Be Assigned:
Pending trademark applications
Registered trademarks
Goodwill
Related marks, applications, or registrations
International registrations
Common law trademarks
Names of individuals (living or deceased)
Domain names, emails, social media or website accounts
Execution Requirements:
Signatories and witnesses
Notarization and legalization
Execution date and location
Power of attorney (if applicable)
Pre-requisites for Trademark Assignment
Registered Trademark: Only registered trademarks are eligible for assignment.
Ownership Rights: The assignor must legally own the trademark and not have transferred it earlier.
Written Agreement: The assignment must be in writing and include:
Assignor and assignee details
Trademark details
Consideration value (money, goods, services)
Date of assignment
Signatures of both parties
Proper Consideration: There must be value exchanged—monetary or non-monetary.
Duly Executed: Signed by both parties, witnessed, and notarized.
Filed with Trademark Registry: The assignment must be submitted to the trademark office to officially update ownership records.
Trademark Assignment Agreement Essentials
Parties' Details: Assignor and assignee names, addresses.
Representations & Warranties: Assignor guarantees ownership and rights.
Covenants: Duties of both parties during transition.
Default/Termination Clause: When agreement ends or breaches occur.
Dispute Resolution: Method for handling disagreements.
Signatures & Notarization: Both parties must sign; notarization required.
Restrictions on Trademark Assignment
Pending Cases: Cannot assign if under cancellation or opposition.
Existing Licenses: Cannot transfer without licensee’s consent.
Consumer Confusion Risk: Cannot assign if misleading or confusing to the public.
Process of Assignment of Trademark in India
Application Filing: The assignee (new owner) or assignor (current owner), or both jointly, must apply for the trademark assignment using Form TM-P.
Timeline: The application must be submitted within six months from the date of assignment. It may be filed later with additional fees as prescribed.
Registrar’s Permission: If the assignment is without goodwill or involves a certified trademark, prior approval from the Registrar of Trademarks is necessary.
Advertisement Requirement: The assignment must be advertised as directed by the Registrar within the specified timeframe.
Submission of Proof: A copy of the Registrar’s direction and the published advertisement must be filed to confirm compliance.
Registration by Registrar: Once satisfied with the documents, the Registrar will record the assignee as the new owner in the trademark register and note the details of the assignment.
Types of Trademark Assignment
1. Assignment With Goodwill
Transfers all rights, including the brand's market reputation, allowing the assignee to use the mark and its goodwill for expanding into related products.
2. Assignment Without Goodwill
Restricts the assignee from using the trademark for the same goods or business as the assignor—allowing operation in different fields.
Assignment Types Based on Rights:
Complete Assignment: All rights transferred.
Partial Assignment: Limited rights transferred (e.g., restricted to a location or product category).
How to Assign a Trademark?
Both parties (assignor and assignee) must agree on the terms of the assignment.
The agreement must be in writing and signed by both parties.
The assignment must be recorded with the Trademark Registry to make it legally effective.
Key Details in the Assignment Agreement:
Names and addresses of both parties.
Clear description of the trademark being assigned.
Terms of the assignment, including the consideration (payment or value).
Date of the assignment.
Note: Recording the assignment with the Trademark Office ensures its enforceability against third parties.
Documents Required for Trademark Assignment in India
Certificate of Trademark Registration (if available)
Names and details of both Assignor and Assignee
No Objection Certificate (NOC) from the original trademark owner
Documents Required for Trademark Registration (Assignment):
Trademark registration protects a brand from misuse or infringement. The process has been made simple and does not require original documents—scanned copies suffice.
Trademark logo (preferably black & white). If unavailable, wordmark registration can proceed.
Form-48 (authorisation letter to the Trademark Attorney)
Identity proof (Aadhaar, PAN, etc.)
Address proof (Utility bill, Aadhaar, etc.)
Penalties for Non-Compliance (India)
Fine up to ₹1,00,000
Imprisonment up to 6 months
Or both
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FAQs on Trademark Assignment
A trademark sale is the transfer of ownership rights of a trademark from one party to another for consideration.
Yes, but only with goodwill; unregistered trademarks cannot be assigned without goodwill.
Yes, notarization is recommended to ensure legal validity.
Yes, goodwill can be assigned along with the trademark.
Complete Assignment, Partial Assignment, Assignment with Goodwill, and Assignment without Goodwill.
Yes, individuals can assign their trademark rights.
It legally records the transfer and protects the rights of both parties.
Yes, by licensing, selling, or assigning the trademark.
It’s the legal transfer of trademark rights from the owner to another party.
Same as above—it refers to transferring trademark ownership.
Assignment transfers full ownership; licensing gives usage rights without transfer of ownership.
Varies by state, generally between ₹100–₹1,000.
Yes, it may attract GST or capital gains tax depending on the nature of the transaction.
Once registered, it remains valid as long as the trademark itself is valid.
10 years, renewable indefinitely.
Either the assignor or assignee, or both jointly.
Yes, any individual trademark owner can assign their rights.
For legal proof and to avoid disputes.
Yes, through a trademark assignment.
Complete, Partial, With Goodwill, Without Goodwill.
A legal document detailing the terms of the trademark transfer.
Generally ₹100–₹1,000, depending on state laws.
Assignment transfers rights; novation replaces an old contract with a new one.
Assignment is voluntary transfer; transmission happens by law (e.g., inheritance).
Yes, to make the transfer enforceable against third parties.