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Trademark Assignment Guide: Process, Benefits, and Key Rules
26 Jul, 2025
By Online Legal India
Published On 26 Jul 2025
Category Trademark
A trademark gives a brand its unique identity in the market. It can be a logo, name, symbol, or phrase that sets a business apart from others. Once trademark registration is complete, it becomes a legal asset of the owner. Just like physical property, a registered trademark can be sold or transferred. This process is called trademark assignment. In India, the law allows trademark owners to assign their rights to another person or company through a formal agreement. This blog explains what trademark assignment means, how it works, and why it is important.
A trademark assignment means the legal transfer of ownership rights of a trademark from one person to another. The person who owns the trademark is called the assignor, and the one receiving it is the assignee. Through this process, the assignor gives the assignee full or partial rights over the trademark. These rights may include the power to use, license, or even sell the mark. The assignment also includes the benefits and value linked to the trademark.
Legal Definition of Trademark Assignment
As per Section 2(1)(b) of the Trade Marks Act, 1999, the term "assignment" refers to the transfer of a trademark through a written agreement made between the concerned parties. This means the rights related to a trademark can only be passed on when both parties agree in writing.
Trademark assignment usually happens during key business or legal events. Each case involves a valid reason where the owner decides to transfer the rights of the trademark to another party.
When a company sells its entire business or merges with another firm, it includes all brand assets in the deal. The trademark is a part of these assets. The new entity receives full control over the brand identity, which includes the logo, name, and symbol. This ensures that the brand continues without legal confusion or loss of market recognition.
If the trademark owner dies or steps down, the rights move to a legal heir or a nominated successor. The new owner may be a family member, business partner, or company. This transfer allows the successor to use and protect the trademark under their name. It also avoids legal gaps in ownership.
A business can sell a trademark without transferring any part of its company. This happens when a party wants to sell a brand name, logo, or slogan to another business. The new owner uses the trademark for their products or services. This sale requires a clear agreement that mentions all the terms of transfer.
When a company changes its legal structure, merges departments, or updates its name, it may shift the trademark to the new legal identity. The assignment ensures that the trademark remains valid and legally protected under the updated business structure. It prevents any ownership dispute in future dealings.
Trademark assignment can take different forms based on how the rights move from the original owner to the new party. Each type serves a specific purpose and affects how the trademark functions after the transfer.
In a complete assignment, the original owner transfers all legal rights attached to the trademark. This includes the right to use, license, modify, and sell the mark. The new owner receives full ownership and control. The previous owner cannot make any future claims or use the mark again. This type suits a full brand sale where the original business exits the market.
A partial assignment allows the transfer of the trademark for specific goods or services only. The original owner keeps the rights for the remaining categories. For example, if the mark applies to both electronics and clothing, the owner may assign it only to electronics. This type helps businesses expand through partnerships without giving away full ownership.
This type includes both the trademark and the commercial value that comes with it. Goodwill means the trust, reputation, and customer base built under the brand name. When goodwill moves with the mark, the new owner steps into the same market and continues the same line of business. This ensures brand continuity and prevents confusion among customers.
In this type, the trademark shifts to the new owner, but the goodwill does not. The new owner uses the mark in a different market or for a different type of product. The purpose is to avoid linking the new business to the old one. The original owner continues operations in the existing market. This helps maintain brand distinction and avoids customer deception.
The step-by-step process for transferring a trademark through a trademark assignment agreement
Step 1: Examine the Trademark
The assignor first checks the current legal status of the trademark. This includes checking for any existing disputes, pending oppositions, or ownership issues. This step confirms whether the assignor has full legal rights over the trademark. It ensures the transfer does not face any legal challenges in the future.
Step 2: Negotiate and Finalise Terms
The assignor and assignee sit together to decide the terms of the transfer. They discuss the scope of rights, duration, usage restrictions, and financial compensation. Both parties must clearly understand each clause. Once they reach an agreement, they prepare the details for documentation.
Step 3: Prepare the Assignment Deed
The assignment deed is a legal document that contains all agreed-upon terms. It mentions the details of both parties, the trademark, and the rights transferred. The deed also lists the responsibilities of the assignor and assignee. Both parties need to sign the deed before witnesses.
Step 4: File the Assignment Application
The assignee applies to the Registrar of Trademarks. The application includes Form TM-P and the signed deed. The assignee pays the official fee as per the trademark type. This step initiates the legal registration of the assignment.
Step 5: Registrar Reviews the Application
The Registrar examines the application and documents. The review checks if the deed meets the conditions of the Trade Marks Act, 1999, and Trade Marks Rules, 2017. If everything is in order, the Registrar moves to the next step.
Step 6: Registrar Raises an Objection (If Needed)
If the Registrar finds any issue in the deed or terms, they object. Both parties receive an official notice with the reason and a date for a hearing. This step gives them a chance to correct the issue and explain their case.
Step 7: Publish the Assignment
After approval, the Registrar publishes the details of the assignment in the Trademark Journal. This publication acts as a public notice. It allows third parties to check the change in ownership.
Step 8: Handle Opposition (If Raised)
Any third party can file an opposition within three months of publication. If this happens, the Registrar sends a notice to both the assignor and assignee. A hearing takes place where all parties submit evidence. After reviewing all facts, the Registrar gives the final decision.
Step 9: Registrar Approves the Transfer
Once the Registrar resolves any opposition or finds no objection, they approve the assignment. The assignee becomes the new legal owner. The Registrar updates the records with the new ownership details.
Step 10: Transfer of Rights and Duties
After approval, the assignee gains complete control over the trademark. They can use it for business, license it, or take legal action in case of infringement. The assignor has no rights left over the trademark after the transfer.
The documents and forms required for trademark assignment are listed below:
This legal document records the transfer of ownership from the assignor to the assignee. It must define the scope of the assignment, trademark details, consideration value, and applicable conditions. The deed must also include jurisdiction, responsibilities, and the effective date of the transfer.
The assignor must provide a NOC to confirm that they willingly transfer the rights. This document helps establish legal consent and prevents future disputes. It acts as a supporting declaration alongside the assignment deed.
The assignee must submit a copy of the registered trademark certificate. It validates the existing legal status of the mark and allows the Registrar to verify the registration number, class, and applicant name.
Valid identity proof, such as an Aadhaar card, PAN card, passport, or company incorporation documents, must be provided for both assignor and assignee. These documents confirm the legal identity of each party involved in the transfer.
Form TM P is the official application form for recording trademark assignment in the Register of Trademarks. It must include:
The form must be filed within six months of the date of assignment. A delay requires a request for extension with valid reasons.
The prerequisites and restrictions of trademark assignment are listed below:
The trademark transfer must happen through a written document. The agreement must carry signatures from both the current owner (assignor) and the new owner (assignee). Verbal deals or informal promises hold no legal value under Indian trademark law.
Both parties must agree on a clear consideration—often a payment or a commercial benefit. The assignment remains valid only when both sides give full legal consent without pressure or confusion. Any vague or forced agreement is invalid.
The law does not allow a single trademark to carry exclusive rights in the same goods or services class for more than one person. It also restricts exclusive rights across different regions of India if it causes public confusion. The Registrar holds the power to reject such assignments unless the applicant shows clear boundaries and no conflict.
If the owner transfers the trademark without its goodwill, the new owner must not use the brand in a way that misleads the public. The Registrar may reject such assignments if the new use creates false links with the original business or damages the brand's original identity. The new use must stay limited to the exact scope mentioned in the agreement.
When a trademark assignment occurs, the Registrar charges a statutory fee to record the new ownership in the official register. The fee amount depends on the mode of filing.
|
Purpose |
Physical Filing Fee |
E-Filing Fee |
|
Register a new owner due to trademark assignment |
Rs. 10,000 |
Rs. 9,000 |
In the process of trademark assignment, the assignor can enjoy the following benefits:
The assignor receives a royalty or lump sum payment after transferring the trademark. This creates a new stream of income without operational involvement.
Trademark assignment opens new market opportunities. The assignor expands the brand into new regions or sectors without direct investment or risk.
A well-drafted assignment deed allows the assignor to set usage terms. The assignee must follow these conditions, giving the assignor strategic control over how the brand is used.
The benefits that an assignee can enjoy are listed below:
The assignee acquires rights to a known and trusted brand. This gives them a competitive edge, builds instant credibility, and increases customer attraction from the start.
Starting a business with a recognised trademark lowers the chance of market failure. The brand already has goodwill, which reduces uncertainty and supports stable revenue flow.
The assignee benefits from existing brand visibility. They spend less on brand awareness campaigns and still gain strong market reach with better returns on investment.
The common pitfalls that you must avoid in trademark assignment are listed below:
If the assignor does not issue a written No Objection Certificate (NOC), the transfer lacks legal backing. The Registrar of Trademarks does not accept verbal consent. This delays the registration process and exposes the assignee to ownership disputes.
A deed that lacks clear terms—such as the scope of rights, duration, territorial limits, or product category—leads to future legal conflict. The deed must clearly state whether the assignment is full or partial and what rights are included.
As per trademark rules, the parties must submit Form TM P within the statutory time limit after signing the assignment deed. If this form is not submitted in time, the Registrar may treat the assignment as invalid and reject the ownership update.
After the assignment filing, a third party may object within the opposition period. If the applicant ignores legal notices or fails to attend a scheduled hearing, the trademark transfer does not move forward. This causes loss of time and legal protection.
Conclusion
Trademark assignment plays a crucial role in transferring brand ownership without disrupting legal rights or market presence. It ensures that the brand identity remains intact while allowing new parties to leverage its value. Once trademark registration is complete, the owner gains the legal right to assign the trademark through a formal agreement. With clear documentation, mutual consent, and timely compliance, both assignor and assignee secure strong legal standing and commercial benefits. The entire process demands accuracy, foresight, and adherence to the law.
To ensure a smooth, error-free assignment process, consult Online Legal India. Their expert support, end-to-end documentation assistance, and regulatory guidance help you avoid pitfalls and complete the assignment with legal certainty.
To assign a trademark in India, the owner must execute a legally valid assignment deed with the assignee. The deed must specify rights, scope, and terms of transfer. After signing, the assignee or assignor files Form TM P with the Trademark Registry along with the deed and prescribed fee. Once the Registrar approves the application, the assignment is recorded in official trademark records.
Form TM P is the official form used for post-registration changes in a trademark. In the case of trademark assignment, TM P enables the trademark owner to record the transfer of ownership with the Registrar. Filing this form is mandatory for legal recognition of the new owner.
Yes, trademark assignment without goodwill is legally permitted in India. This type of assignment transfers only the trademark rights, not the business reputation or product line linked to the brand. It is common when the trademark is sold for use in a different class of goods or services.
Trademark assignment usually takes 3 to 6 months, depending on the completeness of documents, Registrar scrutiny, and whether any opposition is raised. Delay often occurs if the assignment deed lacks clarity or if the TM P form is not properly filed.
An assignment is a voluntary transfer of trademark rights through a legal agreement. Transmission occurs automatically due to legal events such as inheritance, merger, or company dissolution. Assignment requires TM P filing, whereas transmission may involve different legal documentation.
A trademark assignment transfers full ownership and rights of the trademark to another party. In contrast, a license permits another party to use the trademark under agreed conditions while ownership remains with the licensor. Assignment is permanent; a license is time-bound and revocable.
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