Trademark Transfer

A trademark transfer (legally an assignment) is the permanent transfer of ownership of a trademark from one party (the assignor) to another (the assignee). It is governed by Sections 37 to 45 of the Trade Marks Act, 1999 and Rules 73–80 of the Trade Marks Rules, 2017. The transfer must be executed through a properly drafted assignment deed and recorded with the Trade Marks Registry by filing Form TM-P.

Under Section 45, Form TM-P must be filed to record the assignment within 6 months from the date of execution of the deed. The Registrar may extend this window by another 6 months on payment of additional fees. Filing beyond 12 months risks refusal — and an unrecorded assignment leaves the assignee unable to enforce the mark in court, so prompt recording is critical.

An assignment with goodwill transfers the mark together with the underlying business reputation. An assignment without goodwill transfers the mark separately from the business — and under Section 42, it does not take effect until the assignee applies to the Registrar for directions on advertisement and publishes the advertisement as directed. The assignee must apply within 6 months (extendable by up to 3 months). We handle the Section 42 application where applicable.

An unrecorded assignment is not enforceable against third parties, and the assignee cannot sue to enforce the mark in court until recording is complete (Section 45). The Register would still show the old proprietor, creating title and licensing problems. Recording via Form TM-P within the 6-month window is therefore essential to perfect the transfer of ownership.

You need a properly executed assignment deed (covering parties, mark details, consideration, goodwill stipulation, geographical scope and binding effect), identity proof and PAN/CIN of both assignor and assignee, the trademark registration/application number and class details, and a certified copy of the deed for filing. We draft the deed and prepare the complete Form TM-P filing package.

Yes. The Act imposes restrictions to prevent consumer confusion: Section 40 — an assignment is invalid if it would create multiple exclusive rights in the same/similar goods held by different parties; Section 41 — it cannot create conflicting exclusive rights in different parts of India; and Section 44 — associated trademarks must be assigned together (partial assignment of associated marks is not permitted). We check these before drafting.

There are four: Complete assignment (all rights, all goods/services, all classes — Section 38); Partial assignment (only specific goods/services or classes, the assignor retaining the rest); assignment with goodwill; and assignment without goodwill (Sections 39, 42 — requiring mandatory advertisement). The right structure depends on what you intend to transfer and is set out clearly in the deed.

The government fee is paid on Form TM-P (per the Trade Marks Rules First Schedule), separate from our flat ₹5,999 all-inclusive professional fee for deed drafting, filing and Registrar follow-up. Timing depends on the Registry’s examination and whether a Section 42 advertisement is required for a without-goodwill assignment; we monitor the application until the assignee is recorded as the subsequent proprietor.

Strongly recommended. A defective deed — missing consideration, goodwill stipulation, or a clause that breaches Sections 40/41/44 — can lead to registry rejection and an unenforceable transfer. Our trademark attorney drafts the deed with all mandatory clauses, files Form TM-P within the Section 45 window, and handles any Registrar objections, giving you a single point of accountability.

Once Form TM-P is processed, the assignee is entered as the subsequent proprietor in the Register of Trademarks and can enforce, license and renew the mark in their own name. The new owner should then maintain the registration through timely renewal every 10 years to keep the mark protected. We guide you on the post-recording steps and updated ownership records.