A trademark is an asset, and like any asset it can be transferred from one owner to another. In India that transfer happens in one of two ways: by assignment, or through a merger, acquisition or amalgamation.
The distinction that matters most in practice is whether the goodwill of the business goes with the mark.
Merger, acquisition or amalgamation
When companies merge, are acquired or amalgamate, trademark rights either travel with the business or are sold off separately.
In most cases the rights transfer with the business to the new entity. The transfer is effected by recording it in the business transfer agreement or whatever document gives effect to the transaction. Where the marks are sold separately from the business, an assignment deed is executed instead.
Either way, the change needs recording with the Registry. Until it is recorded, the Register still shows the old owner, which creates problems when you come to renew, enforce or license the mark.
Assignment with goodwill
This is a transfer of the mark together with the value it carries in the market.
Say A owns the mark “TH” for watches and assigns it with goodwill. The assignee gets the mark and the reputation attached to it, and can use “TH” for watches or for anything else.
Forms and official fees:
| Status of the mark | Form | Official fee |
|---|---|---|
| Pending application | TM-M | INR 900 per mark |
| Registered trademark | TM-P | INR 9,000 per mark |
Assignment without goodwill
Here the owner transfers the mark but keeps the goodwill attached to the goods or services it has been used on.
If the owner of “ABC” uses it for watches and assigns it without goodwill, the assignee can use “ABC” for anything other than watches. In practical terms, assignor and assignee end up using the same mark in different fields.
This route carries an extra step. The assignment must be advertised so the public has notice of it.
The advertisement requirement:
An application is made on Form TM-P (direction of the Registrar for advertisement of assignment without goodwill), official fee INR 2,700, within six months from the date of the assignment. This is extendable by a further three months on the prescribed form.
The Registrar directs the manner of advertisement. Only once that is done can the assignment be recorded.
Watch the six-month window. Missing it does not void the assignment between the parties, but it obstructs recordal, and an unrecorded assignment is a recurring source of trouble in later enforcement.
Restrictions on assignment
Indian law limits assignments that would result in multiple people holding exclusive rights over the same or similar marks for the same goods, where that would cause confusion.
This comes up more often than people expect in group company restructurings, where marks get parcelled out between entities that continue to sell overlapping products. It is worth checking before the deed is signed rather than after the Registry objects.
Information and documents required
- Assignment deed, executed and stamped, identifying the marks, the parties, the consideration, and whether goodwill is included.
- Power of Attorney in favour of the agent, signed by the assignee. Notarisation, legalisation and apostille are not required in India.
- No objection or confirmation from the assignor where the Registry asks for it.
- For a merger or amalgamation, the scheme of arrangement or court or NCLT order, plus the certificate of incorporation reflecting the change.
Timeline
Recordal typically takes several months, and longer where the Registry raises objections or the assignment is without goodwill and needs advertising first. Assignments recorded at the same time as a renewal or another change tend to move together, so it is worth sequencing filings deliberately.
Frequently asked questions
Do I have to record an assignment? The assignment is valid between the parties once executed, but until it is recorded the Register shows the old proprietor. That creates real problems for renewal, enforcement and due diligence. Record it.
Can a pending application be assigned? Yes. Use Form TM-M with a fee of INR 900 per mark. The application continues in the assignee’s name.
Can I assign a mark for some goods only? Yes, a partial assignment limited to specified goods or services is possible. The specification needs drafting carefully so the split is unambiguous.
What is the difference between assignment and licensing? Assignment transfers ownership. Licensing gives someone permission to use the mark while ownership stays put.
Does the assignment deed need stamping? Yes. Stamp duty applies under the relevant state legislation, and an inadequately stamped deed can create difficulty later.
Useful official resources
- IP India e-filing portal
- IP India public search — to check the recorded proprietor
- Trade Marks Act, 1999
Transferring marks as part of a transaction? Talk to us before the deed is finalised. Fixing an assignment after execution is far more expensive than getting it right first.