A trademark is a valuable asset — it quantifies a business’s reputation and goodwill — and like any asset it can be assigned. Indian law recognises four types of assignment, and getting the type right shapes what the assignee actually acquires.
The four types of assignment
- Complete assignment — all rights in the mark transfer to another entity (the right to further transfer, to license, to earn royalties, and to enforce).
- Partial assignment — the transfer is limited to specific goods or services; the assignor keeps the mark for the rest.
- Assignment with goodwill — the assignee receives the mark together with the goodwill attached to it, and may use it for the same products the assignor built up.
- Assignment without goodwill — the assignor keeps the goodwill in relation to its existing products, and the assignee may use the mark only for different goods or services.
The legal basis and recordal
Assignment and transmission are dealt with under Sections 38–39 of the Trade Marks Act, 1999. To take effect against third parties, an assignment must be recorded with the Registry.
A note on forms: older guidance references TM-16/TM-23/TM-24. Since the Trade Marks Rules, 2017, recordal of an assignment is filed on the consolidated Form TM-P. Always use the current form and fee.
What the assignment deed needs
A sound assignment deed should:
- be in writing and executed by both parties;
- identify the marks (application/registration numbers) precisely;
- state a clear territorial scope;
- specify the consideration (a defined value — nominal or missing value causes problems, including on stamp duty);
- state expressly whether it is with or without goodwill; and
- be supported, on recordal, by the assignee’s affidavit and proper stamp duty.
Practical points
- Decide the type deliberately. “With goodwill” lets the assignee step into the assignor’s market; “without goodwill” restricts them to different goods.
- Value it properly. Consideration drives both enforceability and stamp duty; global deals should isolate the Indian value.
- Record promptly. Until recorded, the register shows the old owner, weakening the assignee’s position — see our related insight on trading trademarks: assignments, mergers and transmissions.
Frequently asked questions
What are the types of trademark assignment in India? Complete, partial, with goodwill, and without goodwill.
What is the difference between assignment with and without goodwill? With goodwill, the assignee can use the mark for the same products the assignor built up; without goodwill, only for different goods or services.
Which form is used to record a trademark assignment? Since the 2017 Rules, recordal is filed on Form TM-P (older TM-16/23/24 references are outdated).
Does the deed need to state a value? Yes. A defined consideration is important for enforceability and correct stamp duty.
Useful official resources
- The Trade Marks Act, 1999
- IP India trademark e-filing portal