Trademark as business asset: A registered trademark can be sold, gifted, licensed or inherited — just like any other property. It is often one of the most valuable assets in a business acquisition or merger.
Trademark as a Transferable Asset
Under the Trade Marks Act, 1999, a registered trademark is a property right that can be transferred from one person to another. This transfer is known as a trademark assignment. Both registered trademarks and pending trademark applications can be assigned in India.
Trademark transfers typically arise in business acquisitions, mergers, restructurings, franchise arrangements, family successions, and monetisation of IP assets. The assignment must be in writing, properly executed, and recorded with the Trade Marks Registry by filing Form TM-P.
Types of Trademark Transfer
The trademark is transferred along with the goodwill of the business associated with it. The assignee acquires both the mark and the reputation built around it. Most common in business acquisitions.
The trademark is transferred without the goodwill of the associated business. Subject to restrictions under Section 42 of the Trade Marks Act, 1999 — the Registrar may impose conditions.
The owner grants a licensee the right to use the trademark for a defined period and purpose, while retaining ownership. Must be recorded with the Registry as a Registered User (Form TM-U).
The trademark is assigned for only some of the goods or services for which it is registered — or for specific geographical regions. The balance remains with the original proprietor.
Trademark Transfer Process
We handle the complete process — from due diligence on the mark being transferred to recording the assignment with the Trade Marks Registry.
Due Diligence
We verify the trademark register — status, renewals, encumbrances and class coverage
Assignment Deed
Trademark assignment deed drafted — parties, consideration, classes, goodwill terms
Execution
Deed executed by both parties — properly stamped as required by state stamp law
Form TM-P Filing
Application to record assignment filed before the Trade Marks Registry
Registry Processing
Registry examines the application and may request clarification or advertisement
Register Updated
Trade Marks Register updated — new proprietor's name recorded officially
Important: Until the assignment is recorded with the Trade Marks Registry, the assignee cannot take legal action for infringement of the trademark in their own name. Recording the assignment promptly is therefore critical to protecting the value of the transfer.
Documents Required
Frequently Asked Questions
What is the difference between trademark assignment and trademark licensing?
Assignment permanently transfers ownership of the trademark from the assignor to the assignee — the assignor no longer has any rights over the mark after a complete assignment. Licensing, by contrast, allows a licensee to use the mark for a defined period and purpose while the licensor (owner) retains ownership. A license can be exclusive or non-exclusive and is typically recorded as a Registered User arrangement with the Trade Marks Registry.
Can a pending trademark application be transferred in India?
Yes. Both registered trademarks and pending trademark applications (where registration has not yet been granted) can be transferred or assigned in India under the Trade Marks Act, 1999. The assignment deed must specify the application number and the assignment is recorded with the Registry once the mark is registered.
What form is used for trademark transfer in India?
Form TM-P is filed before the Trade Marks Registry to record the assignment or transmission of a registered trademark. It must be accompanied by the original or certified copy of the assignment deed and the prescribed government fee. The Registry updates the register to reflect the name of the new proprietor.
Does trademark goodwill transfer with the trademark?
A trademark can be assigned with or without the goodwill of the business associated with it. Assignment with goodwill is more common and straightforward. Assignment without goodwill is subject to restrictions under Section 42 of the Trade Marks Act, 1999 — the Registrar must be satisfied that the assignment will not cause confusion, and may advertise the assignment and impose conditions.
Do I need a written agreement for trademark transfer?
Yes — a properly executed and stamped written trademark assignment deed is required for any trademark transfer. The deed must identify the mark, the parties, the consideration, the classes and goods or services being transferred, and whether goodwill is included. We draft the assignment deed to ensure it complies with the Trade Marks Act, 1999 and is accepted by the Trade Marks Registry on filing of Form TM-P.
Official Resource: For official information, visit the Trade Marks Registry, IP India — the authoritative government source for IP matters in India.