Assignment of Trademark in India : Complete Procedure and Fees

Updated on March 08, 2025 12:19:38 PM

Trademark assignment refers to the transfer of ownership of any trademark, whether registered or otherwise, from one person or party to another. This is most important during mergers and acquisitions, business transformation, or any other cardinal changes to ensure that it does not lose its face among clients and competitors. In India, trademark registration plays a crucial role in this process, as only a registered trademark can provide the legal protection necessary for a smooth and enforceable transfer of rights. Trademark assignment is beneficial for the business because it safeguards the proprietary rights of the business and also helps a business maintain its market position, which is a lot important because legal disputes related to trademark ownership and use become common in today’s business environment.

In India, the trademark assignment process is regulated by the Trademarks Act of 1999 and Trade Marks Regulation 2017. Here’s a step-by-step guide:

  Drafting the Assignment Agreement   Filing Application with the TM Registry   Payment of Government Fees   Examination by the Trademark Office   Advertisement in the Trademark Journal   Approval & Record Update

A trademark assignment offers several advantages, making it a valuable process for businesses and individuals looking to transfer ownership rights efficiently. The benefits are given as follows:

• It benefits the assignee as he gains the advantages of entering the market with a previously registered and known trade mark, this will help him in keeping up the client base for his item without chipping away at brand building.
• It goes about as a proof that it exists. It is an agreement between the assignor and the assignee for the exchange of the trademark if in a case a dispute arises between the parties.
• The assignor gets the opportunity to monetize the value of his trademark and appreciate the products of the time and investments done for creating his brand in the market.
• It helps in business extension and in keeping the brand alive.
• It causes the trademark owner to protect the brand and the goodwill of the item.

A registered trademark can be assigned to the other person in the following situations, as mentioned below:

• Death of the Trademark owner: When the owner i.e. assignor dies, it’s ownership passes to the successor of the previous owners in a will or estate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

• Sale of business: Like other properties , intellectual properties are also the assets for the company. Even the trademark is also sellable along with the company. Provided, it has to be registered under the company’s name. If a company acquires a business along with the trademark rights with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.

• Change of the ownership of the business: When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.

• Change in form of business: Whenever there is a change in business plan or it’s form or structure, an assignment is a boon for those businesses.

According to Section 37 of the Trade Marks Act 1999, the proprietor of a trademark can assign the title of the trademark and claim an amount for the assignment. This means that a trademark holder can transfer trademark rights to another person or entity, either with goodwill (complete transfer) or without goodwill (restricted transfer). A trademark assignment ensures legal ownership is properly transferred, protecting the rights of both parties involved. Proper documentation and registration of the assignment with the Trademark Registry help avoid future disputes.

For completion of the assignment of trademark, there are a few basic requirements that need to be fulfilled by the parties.

• The parties must identify the type of assignment they wish to have, either with or without goodwill.
• The trademark assignment agreement must be in writing;
• Proper Identification of the parties to the assignment, that is, the assignor and the assignee;
• Details and Identification of the Mark(s) to be assigned;
• Identify the effective date of the assignment;
• Be duly executed, i.e. it must be signed by all the parties of the assignment,
• Form TM-P should be duly filled and submitted to the registrar along with the trademark assignment agreement between the parties.
• The trademark should be transferred for a valid consideration;

A Trademark Assignment Agreement is a legal document through which the proprietor of a trademark transfers their rights to an assignee. When drafting this agreement, the following key aspects should be carefully considered:

• It must be noted that by agreeing to any of the obligations stated in the agreement, the rights associated with the trademark should not be prejudiced.
• It should clearly state if the goodwill of the business in consideration is included in the assignment or not.
• The rights to the trademark should be assigned for the intended purpose.
• It is necessary to determine the scope of the geographical region for which the assignee has rights and value in the trademark.
• The issue of the assignment of rights to sue and recover damages for current and future losses also needs to be addressed in the agreement.
• The proper implementation of the agreement should follow all the recognized legal frameworks, such as the Stamp Act, as well as proper notarization of the agreement.
• Here, one is supposed to include the signatures of the involved persons as well as the witnesses.
• This implies that the place and date of execution should not be pointed out implicitly.
• The name and details of the contracting parties, as well as other essential terms such as the date on which the assignment of the agreement takes effect, should also be included.