How to File Trademark Assignment Application in India

Over 8,500 trademark assignments were recorded with the Indian Trademark Registry in 2024, driven by business acquisitions, brand sales, and startup consolidations. Filing a trademark assignment application in India costs Rs 9,000 per trademark per class (government fee), takes 3 to 6 months, and requires Form TM-P along with an executed assignment deed. This guide covers the complete process from drafting the assignment deed to recording the transfer in the Register of Trade Marks under Sections 37 to 45 of the Trade Marks Act, 1999.

What is Trademark Assignment?

Trademark assignment is the permanent transfer of ownership rights in a registered trademark or pending trademark application from the current owner (assignor) to a new owner (assignee). Under the Trade Marks Act, 1999, a trademark is a form of intellectual property that can be sold, gifted, or transferred just like physical property. The assignment is effective between the parties upon execution of the assignment deed, but it must be registered with the Trademark Registry to be enforceable against third parties and to update the public record.

Assignment differs from licensing. In an assignment, the assignor permanently gives up all rights to the trademark. In a license, the owner retains ownership and merely grants permission to use the mark. The assignee becomes the new registered proprietor and can exercise all rights of ownership including enforcement, further assignment, and licensing to others.

Types of Trademark Assignment

The Trade Marks Act recognizes several types of trademark assignment, each with different legal implications and requirements.

Assignment with Goodwill

This is the most common type of trademark assignment where the mark is transferred along with the entire business goodwill associated with it. The assignee receives not just the right to use the mark but also the reputation, customer recognition, and market position built around the brand. Under Section 37(1), an assignment with goodwill is straightforward and does not require the Registrar to evaluate the risk of consumer confusion. This type is standard in business acquisitions where the buyer acquires the brand as part of the overall business purchase. The assignment deed should explicitly state "assignment with the goodwill of the business concerned."

Assignment without Goodwill

Assignment without goodwill (also called "gross assignment") transfers only the trademark rights without the associated business reputation. This means the assignor can continue operating a similar business under a different brand while the assignee uses the assigned mark. Section 40 imposes restrictions on this type: the Registrar must be satisfied that the assignment will not create confusion among consumers about the origin of goods/services. The assignee must advertise the assignment within the Registrar's prescribed time. This type is used when a company divests a specific brand from its portfolio while continuing other brand operations.

Prerequisites Before Filing

Before preparing Form TM-P, ensure these prerequisites are in place:

Trademark Status Verification

Verify the current status of the trademark on the IP India portal at ipindiaservices.gov.in. The trademark should be in "Registered" or "Formalities Chk Pass" status. If the trademark has expired due to non-renewal, renew it before filing the assignment (renewal fee: Rs 9,000 plus Rs 3,000 surcharge if overdue). If the trademark is under opposition, the assignment can still proceed but the assignee takes over the opposition proceedings.

Due Diligence

The assignee should conduct due diligence before acquiring the trademark: verify no existing licenses or Registered User entries that may complicate the transfer, check for any pending cancellation or rectification actions against the mark, confirm the assignor is the legitimate owner recorded in the Register, and verify no liens, charges, or encumbrances exist on the trademark. Request a certified extract (Form TM-46) from the Registry showing the complete ownership history.

Step-by-Step Trademark Assignment Process

The complete process involves 9 steps from deed preparation to recording in the Register. Each step is explained below with exact requirements, forms, and timelines.

Step 1: Determine the Assignment Type

Based on your business situation, determine whether the assignment is with goodwill or without goodwill, complete or partial, and whether it covers all classes or specific classes only. For business acquisitions, use assignment with goodwill. For brand portfolio restructuring, consider partial assignment. For mergers and inheritance, use transmission by operation of law. The assignment type affects the documentation, fee structure, and Registrar's scrutiny level.

Step 2: Draft the Assignment Deed

The assignment deed is the primary legal document establishing the transfer. It should be drafted by a trademark attorney and include: full details of both parties (name, address, legal entity type), complete trademark details (registration number, class, goods/services, description), type of assignment (with/without goodwill, complete/partial), consideration amount and payment terms, effective date of transfer, representations and warranties (the assignor confirms they are the rightful owner and the mark is free from encumbrances), indemnification clause, and governing law. Execute the deed on non-judicial stamp paper (value depends on state stamp duty rules, typically Rs 100 to Rs 500 for non-monetary transfers).

Step 3: Notarize and Execute the Deed

Both the assignor and assignee (or their authorized representatives with valid Power of Attorney) must sign the deed in the presence of two witnesses. Get the deed notarized by a registered Notary Public. For corporate parties, the signatory must be authorized by a board resolution. For cross-border assignments involving foreign parties, the deed must be executed according to the foreign country's laws and apostilled under the Hague Convention or consularized at the Indian embassy for non-Hague countries.

Step 4: Prepare Form TM-P

Complete Form TM-P as prescribed under Rule 68 of the Trade Marks Rules, 2017. Key sections include: details of the trademark (registration number, class, description), assignor details (current registered proprietor), assignee details (new owner), nature of assignment (with/without goodwill, complete/partial), consideration details, and effective date. Attach: the executed assignment deed, identity proofs, corporate authorization documents, and Power of Attorney. The form can be prepared online through the IP India portal.

Step 5: File Form TM-P and Pay Fees

Submit the completed form through the IP India e-filing portal or physically at the appropriate Trademark Registry office. The fee is Rs 9,000 per trademark per class for e-filing and Rs 10,000 for physical filing. If a trademark is registered in 3 classes, the total fee is Rs 27,000 (3 x Rs 9,000). Pay through the integrated payment gateway (net banking, UPI, debit/credit card). The system generates an acknowledgment receipt with a unique filing number for tracking purposes.

Step 6: Registrar's Examination

The Trademark Registry examines Form TM-P for: compliance with Sections 37 to 45, accuracy and completeness of the assignment deed, proper execution and notarization, fee payment confirmation, and (for assignments without goodwill) evaluation of potential consumer confusion. If deficiencies are found, the Registry issues an office action requesting corrections or additional documents. You typically have 1 month to respond. Examination is usually completed within 4 to 8 weeks of filing.

Step 7: Advertisement in Trade Marks Journal

After the examination is cleared, the Registrar directs the assignee to advertise the assignment in the Trade Marks Journal (published weekly online at ipindia.gov.in). The advertisement must be published within the time specified by the Registrar (usually 3 months). The advertisement includes: trademark details, assignor and assignee names, type of assignment, and effective date. The purpose is to give public notice and allow interested parties to file objections. Failure to advertise within the prescribed time can make the assignment void under Section 39.

Step 8: Handle Oppositions (If Any)

After publication, any person can file an opposition claiming the assignment would cause public confusion, is contrary to public interest, or violates the restrictions under Section 40 or 42. The Registrar schedules a hearing where both parties present arguments. Most trademark assignments pass without opposition (approximately 95% of cases). If an opposition is filed, it typically adds 3 to 6 months to the process. Engage a trademark attorney to represent you in the hearing.

Step 9: Recording in the Register

After the advertisement period passes without opposition (or the opposition is dismissed), the Registrar records the assignment in the Register of Trade Marks under Section 45(2). The Register is updated to show the assignee as the new registered proprietor with the assignment date and reference to the assignment deed. The assignee receives a certified copy of the updated registration reflecting the ownership change. The assignee is now the full owner with all rights to enforce, license, and further assign the trademark.

Trademark Assignment Fee Structure (2025)

Assignment of Pending Trademark Applications

Section 37(1) explicitly permits the assignment of pending trademark applications that have not yet been registered. This is common in startup acquisitions where the acquiring company takes over all IP assets including pending applications.

Process for Pending Applications

The process is identical to registered trademark assignment: draft an assignment deed referencing the application number instead of the registration number, file Form TM-P, and pay the same fees. The key difference is that the assignee takes over the application prosecution process. If the application faces examination objections or opposition, the assignee must respond. The assignee's name is updated in the application records, and upon registration, the mark is registered directly in the assignee's name.

Risk Considerations

Assigning pending applications carries the risk that the application may be refused or withdrawn after the assignment. The assignee has no guarantee of registration. Conduct thorough search and due diligence before acquiring a pending application. Check the prosecution history, any examination objections, and similarity search results to assess the likelihood of successful registration.

Special Scenarios in Trademark Assignment

Assignment During Merger or Acquisition

When companies merge, trademarks transfer automatically through transmission by operation of law under Section 37(2). No separate assignment deed is needed. File Form TM-P with the NCLT-approved merger scheme or amalgamation order, ROC certificate of merger, and a board resolution of the surviving entity. The Registrar records the transmission based on the court or statutory documents. This is faster than a standard assignment because no separate negotiation or deed execution is involved.

Assignment Upon Death (Inheritance)

Trademarks pass to legal heirs through inheritance under the Indian Succession Act, 1925 (for testamentary succession) or personal law (for intestate succession). The heir must file Form TM-P with: the death certificate, probated will (if available), succession certificate from the court (if no will), and legal heirship certificate. The Registrar records the transmission after verifying the succession documents. No stamp duty or assignment deed is required for inheritance.

Cross-Border Assignment

When a foreign company assigns an Indian trademark to an Indian company (or vice versa), additional requirements apply: the deed must comply with both Indian and foreign law, the foreign document must be apostilled (Hague Convention countries) or consularized (non-Hague countries), consideration payments must comply with FEMA regulations (inward remittance through authorized dealer bank), and GST implications on cross-border IP transfer must be addressed (reverse charge mechanism for import of services).

Common Mistakes in Trademark Assignment

1. Missing the 6-Month Filing Deadline

Section 45(1) requires filing Form TM-P within 6 months of the assignment deed. Many businesses complete the assignment deed during an acquisition but delay the Registry filing. After 6 months, the Registrar has discretion to accept or reject the late filing. Always file Form TM-P immediately after executing the assignment deed. Set a calendar reminder for the deadline.

2. Not Checking for Existing Registered Users

If the trademark has existing licenses (Registered Users under Section 49), the assignee inherits these licenses. Many assignees discover post-assignment that a third party has a valid license to use their newly acquired trademark. Conduct a thorough search of the Register for any Registered User entries before completing the assignment. If existing licenses conflict with your plans, negotiate their termination before closing the deal.

3. Incorrect Stamp Duty

Stamp duty on assignment deeds varies significantly by state and by the consideration amount. Executing the deed on insufficient stamp paper can make the deed inadmissible as evidence in court. Consult a local stamp vendor or advocate for the correct stamp duty in your state. For high-value trademark assignments (Rs 1 crore+), the stamp duty can be substantial in states like Maharashtra (3% to 5% of consideration).

Related Resources

• Trademark Registration in India - register your trademark before assigning
• Trademark Renewal - renew an expired trademark before assignment
• International Trademark (Madrid Protocol) - protect your trademark internationally
• How to Copyright a Song or Music in India - copyright your creative works
• Copyright Registration - register copyrights for creative works

Summary

Filing a trademark assignment application in India involves executing an assignment deed on stamp paper, completing Form TM-P under Rule 68, filing with the Trademark Registry at Rs 9,000 per trademark per class, and advertising the assignment in the Trade Marks Journal. The process takes 3 to 6 months and is governed by Sections 37 to 45 of the Trade Marks Act, 1999. File within the 6-month deadline from the assignment deed date, conduct proper due diligence on the mark's status and existing licenses, and ensure correct stamp duty to avoid legal complications. For business acquisitions and mergers, use the transmission route with court or statutory documents for faster processing.