assignment of trademark stamp duty

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Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

• I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
• I got married just after I filed my application and my last name changed.  This is a name change of the owner. 

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an  Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP)  section 501.01(a) . 

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the  TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons: 

• A critical piece of information was omitted from the cover sheet. 
• The document is illegible or not scannable. 
• The information on the cover sheet and the supporting document do not match. 
• The assignment was not transferred with the good will of the business. 

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 . 

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

• Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
• Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet 

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to: 

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing. 

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

• Go to TSDR .
• Enter the application serial number or registration number.
• Select the “Status” button.
• Scroll down to the “Current Owner(s) Information” section. 
• Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

• If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
• If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form . 
• If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

Additional information about this page

What Is the Stamp Duty for Trademark Assignment?

The application process of obtaining a trademark and assignment of a trademark as an individual entrepreneur can be seen as daunting due to the number of documents one needs to take care of, and it's often tricky to find information about the proper procedure. However, with this blog article, you'll know everything about the stamp duty for trademark assignment.

 Stamp Duty for Trademark Assignment:   Trademark assignment is the process of handing over trademark rights to someone else in order to use the same trademark. Sometimes, this switch can help your firm increase or improve its perspective and market share.

Table of Contents

Types of Trademark Assignment:

Partial assignment:.

Partial trademark assignment is when the trademark owner assigns part of the trademark to another business. It allows the business to receive legal protection until it becomes a complete trademark and ownership transfer happens. The retailer may use both pieces of information in advertisements to promote their company and verify that they are not breaking any laws.

Complete Assignment:

In a complete assignment, the assignee owns every right to sell, and earn royalties on the trademarks assigned to them.

With goodwill trademark assignment, the power of a registered trademark is assigned to someone else. The party that receives the assignment is named as the assignee on the trademark registration. Once a trademark is assigned with goodwill, it may be transferred or used by anyone. 

Without Goodwill:

Under these trademark assignments, only the trademark is transferred and not the brand value. And the assignor must use the trademark for any of their other businesses.

Applying Trademark Application

To apply for a trademark online in India, you need to create an account with the Trademark Registrar. After creating your account, you will need to identify your goods and services and provide relevant information such as the name of your company and the type of mark you are filing for. The Trademark Registrar offers a variety of documents to support your application, such as a drawing of your proposed mark, an affidavit of use or intent to use the mark in commerce, and proof of ownership of the mark. You will also be required to pay a filing fee and submit a verified original signature. Once your application is filed, it will be sent to an examiner who will decide whether to allow your mark into circulation. If your application is approved, you will receive a registration certificate that includes the symbol ® and identifying information.

Fees and Payments

To apply for a registered trademark online, you’ll need to pay the applicable filing fee and send in your application. Here’s a breakdown of what you’ll need to pay: 

• If you are not a start-up, small enterprise, or individual you will have to pay ₹ 9,000 for lodging an application electronically and ₹10,000 if you file in person with the Trademark Registrar.
• Individuals, small enterprises, or startups must file with the TM application by paying a fee of ₹ 4,500 for e-filing or ₹5,000 for filing by hand
• Based on the type of TM applied as per the stamp duty act, one needs to pay 5% stamp duty per TM application or assignment submitted

Forms of Identification

When applying for a registered trademark, it is important to have the appropriate forms of identification ready. There are a few different options available, and each has its own set of requirements:

• The first option is to submit a filing affidavit with your application. This document must be signed by the owner or owner’s representative and verified by an independent expert. The affidavit must include information such as the trademark’s logo, description, and date of first use. In addition, you must list the names and addresses of all owners or holders of rights to the mark.
• Another option is to submit an application containing only documents that establish trademark ownership. This document must include a copy of the registration of trademark certificate or a declaration from the entity claiming ownership that it is the true owner of the mark. The application must also include a statement from the applicant confirming that he or she is authorized to use the mark. Finally, you must provide contact information for any authorized representatives.

If neither of these options meets your needs, you can submit an application containing only extracts from previously filed documents. This document must include a statement confirming that you are copying copyrighted material without permission.

Benefits of Trademark Registration:

The benefits of trademark ownership can vary greatly depending on individual needs. Registering your mark, however, will help protect your financial and intellectual property rights. For beginning business owners that are not already familiar with trademark law, the process may seem a bit complicated and confusing to begin with.

If you are looking to apply for a registered trademark online and understand the fees involved, this article explains it all in detail. The process is relatively easy. Just go to the Trademark Registrar, fill out an application form, and pay the applicable fees. You will then need to send in citations of where your mark is currently being used, as well as additional documents if requested by the Trademark Registrar. Once the application is complete, you will be given details on when to send in your trademark registration certificate. 

Also, Read:

• How Are Trademarks Selected and Ownership ?
• Document Required for Assignment of Trademark
• How Do I Assign a Registered Trademark ?

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Everything you need to know about a Trademark Assignment Agreement

13 Mar 2023

A trademark may be one of the most important assets for your business.

Find out how to protect your business and enhance the value of your company with a Trademark Assignment Agreement. 

If your business uses unique phrases or logos in your production of goods and services, you may wish to differentiate your business from your competitors. Often, customers rely on a trademark to distinguish one product from another.

Therefore, the reputation of your business may depend on the value and authenticity of your trademark. Hence, it is important to fully understand what a Trademark Assignment Agreement is and how to use it to your advantage. 

What is a trademark?

A trademark is a type of intellectual property which identifies your goods or services. It can be any word, phrase, symbol, design that is able to distinguish your goods and services from others. 

Having a trademark protects you and your business from your competitors. With a trademark, your goods and services cannot be easily replicated or copied. Depending on what jurisdiction you are in, there are different ways of protecting this right.

You may register your trademark so that you secure the exclusive right to use your trademark and eliminate any possibility that your competitor can copy your business. For instance, in Hong Kong, you can register your trademark with the Trade Marks Registry of the Intellectual Property Department. The legal effect of registration is that you will personally own the trademark, possess exclusive right and can take legal action against a third party who uses your trademark. 

What is assignment?

During assignment, one person, or the assignor, transfers rights or benefits to another person who is known as the assignee. In the context of trademarks, an assignor is the trademark owner and they can transfer the rights, interests, titles and benefits to the assignee, who is the new owner. 

Beyond the assignment of trademark, patents and other intellectual property can also be the subject of assignment. Check out DocPro’s Patent Assignment Agreement and Intellectual Property Assignment Agreement . 

What is a Trademark Assignment Agreement?

As part of the trademark assignment process, it is useful for the assignor and assignee to utilise a Trademark Assignment Agreement .

A Trademark Assignment Agreement outlines the specific details of the transfer of the assignee’s rights, titles, interests and benefits attached to the trademark. As with all written contracts, it provides much more legal certainty and clarity as compared to any oral agreements. 

It is important to note that Trademark Assignment Agreements are different from licenses to use trademarks. Licenses to use trademarks merely provide a user with permission to use a trademark and is not a transfer of ownership rights. 

When do you need a Trademark Assignment Agreement? 

Typically, the registered proprietor of the trademark may assign a trademark for consideration. When a registered proprietor of the trademark wishes to transfer a registered trademark to another person for consideration, they may utilise a Trademark Assignment Agreement to facilitate this transaction. 

In addition, a Trademark Assignment Agreement may also be executed even without a trademark registration. In some circumstances, owners of trademarks such as inventors or creators may assign the ownership of their trademark to a third party, like a company, in return for consideration. 

Why is a Trademark Assignment Agreement important?

Most people may have a rough conception of what a trademark is, but may not have much clarity as to the transfer of ownership. Therefore, it is important to draft up a Trademark Assignment Agreement. It is especially crucial if your business depends heavily on the value of the trademark, which depend on the certainty of the valid legal ownership of this trademark. 

A Trademark Assignment Agreements provides valid proof of the legal right to the trademark. In the event of a dispute, the Trademark Assignment Agreement confirms who the most updated owner of the trademark is. 

How to write a Trademark Assignment Agreement?

A Trademark Assignment Agreement provides an outline of the transfer of an assignor’s rights, title and interest. 

Read on to learn more about the essential provisions in a Trademark Assignment Agreement. 

Assignment 

The assignment provision assigns the rights, title and interests of the trademark to the Assignee and lists the date which the assignment of the agreement takes effect. 

This provision is important since it irrevocably and absolutely assigns the aforementioned rights, title and interests and provides confirmation of the assignment. 

Consideration

As part of the trademark assignment, the assignee may pay the assignor a stipulated sum for the assignment of the trademark and the associated intellectual property. Depending on their preference, the consideration may take the form of money or the assignee’s ordinary shares. 

The warranty section is essential in ensuring that the assignor has the power to enter into the agreement and has the power to legally perform their obligations. It is especially important in the context of a Trademark Assignment Agreement since the assignee would want assurance from the assignor that the trademark that is being assigned is free from mortgages, charges and other security interests, and that the assignor has not assigned, licensed or disposed any interest regarding the trademark to any other party other than the assignee. 

Costs and duties

Beyond consideration for the trademark assignment, parties may be additionally responsible for different associated costs. 

For instance, there may be additional incurred costs for negotiation, preparation and execution of the assignment, or stamp duty associated with the transfer in ownership of the trademark. This section outlines who would be responsible for each item of payment to provide clarity in the event of a dispute. 

Schedule / Description of Trademark

At the end of the Trademark Assignment Agreement, the assignor and assignee may provide details of the trademark that is to be assigned. 

If relevant, the specific technology associated with the trademark and any other proprietary information can be detailed in this section. A description of the trademark, including any creative particulars can be outlined. This is important in situations where the trademark in question is a word or phrase or a complicated design. 

Both parties to the assignment can have a clear idea as to what the trademark comprises and the scope of the assignment. 

Must a Trademark Assignment Agreement be in writing? 

Usually, assignment agreements are not required to be in writing and merely must show an intention to transfer rights. 

However, local legislation governing the assignment of trademarks may stipulate that the assignment must be in writing. For instance, in Hong Kong, the assignment of a registered trademark must be in writing and signed by the assignor (s27(4) Trade Marks Ordinance Cap 559). 

Therefore, you should always refer to your local legislation on the guidelines governing the transfer of a Trademark Assignment Agreement. 

It will always be in your business’ best interests to protect the value of your trademarks. To properly distinguish your products and services from your competitors, prevent misuse of your trademark and to ensure your business can reach its full potential, make sure you use a Trademark Assignment Agreement.

Please note that this is a general summary of the position under common law and does not constitute legal advice. As the laws of each jurisdiction may be different, you may wish to consult your lawyer.

Christina Keough

Christina is a legal writer at docpro. christina manages the legal articles and blogs, identifies legal topics, and invites lawyers and legal experts to contribute. christina holds a law degree from a leading university. if you would like to become a blog contributor to docpro, please click the link below:, docpro legal contributor, trademark assignment agreement, intellectual property, related posts.

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What Is the Stamp Duty for Trademark Assignment?

Trademark assignment requires the transfer of trademark ownership from a single party to the next. This could happen for numerous reasons like company acquisitions, mergers or merely the purchase of a trademark. An essential component of this is the payment of stamp duty that the government levies on legal papers. Let us discuss what stamp duty is, why it is essential in trademark projects, and also how it’s estimated and paid out in India?

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What is Stamp Duty?

Stamp duty is tax paid on specific legal documents. This tax was created to make these documents legally binding. Without paying the appropriate stamp duty, documents are not legal under the law. When it comes to trademark transfer, stamp duty can make the transfer of trademark registration rights permissible.

Why Stamp Duty Matters in Trademark Assignment?

If a trademark is given to the next party, the new proprietor utilizes the trademark for their services or products. This can be a substantial change, particularly in case the trademark is recognizable and has a good reputation. Stamp duty is paid out on the assignment document to record this transfer of rights legally. Additionally, it protects both parties in the transaction through legal evidence of the assignment.

Types of Trademark Assignment

Prior to discussing stamp duty details, understand the kinds of trademark assignments:

Partial Assignment

This is transferring just part of the trademark rights to someone else. For instance, a business might appoint the right to work with a trademark for particular services or products but keep the rights for various other uses.

Complete Assignment

Here the whole trademark along with associated rights are assigned to the new owner. The assignee can subsequently use, sell and receive royalties from the trademark.

Assignment with Goodwill

Goodwill is the mark of the trademark’s reputation and brand name worth. An assignment with goodwill means the new owner receives a good track record and consumer loyalty related to the trademark too.

Assignment Without Goodwill

Here only the trademark is transferred (no brand value is transferred). The initial owner may still use the trademark for various other businesses however the new owner is authorized to put it to use for the agreed upon purposes.

How To Apply for Trademark Assignment in India?

There are numerous steps in applying for trademark assignment in India. This is a simplified guide to explaining the process:

Prepare the Assignment Agreement:

This document defines the terms and conditions associated with the trademark transfer. It should specify who’s involved, what trademark is being assigned and if the assignment is goodwill.

Calculate Stamp Duty:

The precise amount of stamp duty due depends upon the valuation of the trademark and also the nature of the assignment. Stamp duty is normally a proportion of the worth of the trademark. This is typically 5% of the transaction value in India.

Execute the Agreement:

Both need to sign the assignment agreement. Have the document notarized as a further legal validation.

Send the Agreement to the Trademark Registrar:

The assignment agreement has to be submitted with the Trademark Registrar within 6 weeks from the assignment date. It is possible to do this online with the Trademark Registrar of India site.

Pay Stamp Duty:

Stamp duty is usually paid by electronic stamping, physical stamp papers or franking. The fastest and most typical technique would be e-stamping.

Receive the Registration Certificate:

After the Trademark Registrar verifies the assignment agreement and stamp duty continues to be paid out, a brand new registration certificate is issued in the assignee’s name. This certificate is evidence of trademark assignment.

Detailed Calculation of Stamp Duty

Stamp duty might be calculated differently depending on the assignment. The way it’s typically calculated is shown below:

Trademark Value:

To begin with, figure out the worth of the trademark. This could be based on things including market value, earnings from the trademark, and brand popularity.

Percent of Stamp Duty:

India’s stamp duty rate on trademark assignments is 5% of the trademark value. However this rate could differ by state regulations and assignment specifics.

Consideration Amount:

Consideration amount is the cost paid for the trademark assignment. From this amount stamp duty is computed.

Extra Charges:

There could be extra fees or charges for paying stamp duty. They might include e-stamping service fees or notary fees.

The Benefits of Registering a Trademark Assignment

The registration of a trademark assignment and also the payment of stamp duty provides several benefits:

• Legal Protection: Makes sure the assignment is legally recognized and enforced in court.
• Clear Ownership: Gives evidence of the new ownership and decreases risk of disputes.
• Value of Brand: Helps maintain and possibly improve brand value related to the trademark.
• Market Expansion: Allows the assignee to enter new markets utilizing a recognized trademark or to expand existing markets.
• Financial Benefits: Allows the original owner to profit from the trademark leading to financial returns.

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Anyone who transfers trademark rights should know about stamp duty for trademark assignment. Follow these steps and pay the proper stamp duty to help make the assignment legal and protected. This protects both parties and helps keep the trademark integrity and value. 

Regardless of whether you’re a business person delegating a trademark or a person purchasing one, knowing the assignment and stamp duty procedure can help you deal with this area with confidence.

What is the stamp value assigned to a trademark?

The stamp value for trademark assignment is normally 5% of the trademark transaction value. This rate might differ by state regulations and the terms of the assignment agreement.

What is the stamp duty for trademark assignment deeds in Delhi?

The stamp duty for any trademark assignment deed is 5% in Delhi. Nevertheless, talk to local authorities for up-to-date rates.

Is stamp duty payable on a deed of assignment of IP rights?

Yes, stamp duty is levied on a deed of assignment of IP rights (including trademarks). The precise amount depends upon the IP value and state-specific regulations.

What are the requisites for trademark assignment?

The requirements for Trademark assignment are a signed assignment contract, payment of appropriate stamp duty, submission of the agreement to the trademark Registrar and updating the trademark registry with the new owner’s details.

How much does trademark assignment cost?

The cost of Trademark assignment includes stamp duty (5% of the transaction value) and filing charges by the trademark Registrar. There might also be legal fees related to drafting and notarizing the assignment deed.

What is the difference between trademark licensing and assignment?

Trademark licensing enables the licensee to use the trademark in specified conditions while ownership stays with the licensor. Trademark assignment is an entire transfer of trademark ownership to the assignee.

Ankit Pal is a content writer with a keen interest in law and legal research. A graduate of HNLU, Raipur, he has contributed numerous papers published in reputed journals, showcasing his expertise and dedication to delivering high-quality work.

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Decoding Indian Stamp Duty Requirement for IP instruments

Musharaf Khan

• July 20, 2023

As per the Indian Law, stamp duty is payable on every instrument [1] . It is an indirect tax paid to the government. The Indian Stamp Act, 1899 (2 of 1899) was enacted to consolidate and amend the law relating to stamps. It extends to the whole of India.

The Indian Stamp Act, 1899 (2 of 1899) is a fiscal statute prescribing the rates of Stamp Duty as specified in Entry 91 of List-I (Union list) of the Seventh Schedule to the Constitution of India List (viz. Bills of Exchange, cheques, promissory notes, bills of lading, letters of credit, policies of insurance, transfer of shares, debentures, proxies and receipts)  The States are empowered under Entry 63 of List-II (State list) of the Seventh Schedule to the Constitution of India to prescribe the rate of stamp duty on instruments other than the instruments specified in Entry 91 of Union list.

The Indian Stamp Act, 1899 is a Central enactment and the state have the powers to adopt the Indian Stamp Act, 1899 with amendment to same, to suit the transaction peculiar to each state. Accordingly certain states have introduced Schedule 1 to the Indian Stamp Act, 1899 being the stamp duty payable in each state. State such as Maharashtra (The Bombay Stamp Act, 1958), Gujarat (The Gujarat Stamp Act, 1958), Karnataka (The Karnataka Stamp Act, 1957), Kerela (The Kerela Stamp Act, 1959) and Rajasthan (The Rajasthan Stamp Act, 1998) have their separate Stamp Act, while many State follows the Indian Stamp Act, 1899 [2] .

There are mainly two types of stamp paper.

• Judicial stamp papers: As the name suggest, it is used for Court proceedings.  It is called Court fees.
• Non-Judicial stamp papers: This is used for contractual kind of activities between the parties e.g., contracts, agreements, registration of documents, entering leases /sale purchase transactions etc.

Stamp duty serves as a legal requirement for certain types of transactions to be considered valid and enforceable. For example, a sale agreement for a property must be executed on a stamp paper of appropriate value and stamped according to the relevant state’s stamp duty laws. Failure to pay the appropriate stamp duty on a transaction can result in penalties or fines and may render the document invalid in a court of law.

Stamp Duty payable on instruments specified by the statute is fixed or on ad valorem basis i.e., on basis of value of property. The stamp duty charges are mainly based upon the values which are mentioned in the documents.  e.g., Articles of Association, Mortgage deed etc. However, for few documents e.g., Affidavits, Power of Authorization, indemnity bond, the stamp duty payable is always fixed regardless of the value which is mentioned in the document or the instrument. For certain other instrument, stamp duty is based on the consideration value mentioned in the document or the market value, whichever is higher. e.g.  Conveyance, Sale Agreement, Partnership Deed etc

The payment of Stamp Duty is mostly done before the execution of the document.   Failing to make the necessary payment will result in penalty charges.  Documents which are inadequately stamped are not admitted as evidence in the court.  The stamp papers are to be purchased in the name of one of the parties to the transaction. The validity of a stamp paper is six months from the date of purchase.

Patents, trademarks, and other forms of intellectual property are included within the meaning of movable property under the stamp laws. As such, state specific stamp laws are applicable for the IP rights.  Stamp Duty pertaining to IP rights is levied at various stages of registration, licensing and transferring.

In general, stamp duty is applicable on various types of instruments, including;

• POWER OF ATTORNEY (POA):   – If an application for trademark/patent/design or any other Intellectual property rights, is filed in India by a person other than the Applicant, it is mandatory to submit a duly stamped Power of Attorney.  The POA can be signed by the Authorized Signatory of the Applicant. The Stamp duty payable being state specific may approximately be up to 10 USD. There is no requirement for notarization and/or legalization.
• AFFIDAVITS:   In various proceedings, be it at Court or Registry level it is required to file an Affidavit. Basically, an affidavit is a sworn statement put in writing. With respect to trademark, if the Applicant claims prior use of the mark, in such case it is a mandatory requirement to submit the Affidavit of use. The Applicant shall file an affidavit testifying to such use along with supporting documents. [3] .  The Stamp duty payable being state specific, may be up to 5 USD for Affidavit. The Affidavit of use must be duly notarized.
• ASSIGNMENT AGREEMENT : Assignment refers to actual transfers of ownership of intellectual property from the assignor to the assignee.  In this, the rights of the assignor is permanently transferred. It is an absolute transfer.  Such transfer of Intellectual Property rights is carried out by way of an assignment deed. It is pertinent to note that payment of stamp duty is not required for the assignment of Copyrights. Stamp duty is payable on the monetary consideration stated in the assignment deed.  Stamp duty payable varies in each State. The Assignor and Assignee can check for the stamp duty rates in its particular state and thereby execute a assignment deed in which the lower stamp duty is applicable.  The applicable stamp duty rates in India varies from 3% to 7% of the consideration amount, depending on the state wherein it is executed.
• LICENSING AGREEMENT (REGISTERED USER AGREEMENT ): – In a Licensing agreement, the IP holder (“licensor”) licenses its IP rights to any third party and allows a third-party to use the said rights for a limited time period.  A licensing agreement is subject to stamp duty. Stamp duty is paid by the licensee to the licensor. 
• BUSINESS AGREEMENTS  (e.g., Non-disclosure Agreement, Endorsement Agreement, memorandum of Understanding, Master Service Agreements, Franchise Agreement etc.) Stamp Papers are not mandatory for all the agreements but are necessary only for a few kinds of or instruments or agreements as specified by the State government.  Generally, no stamp duty is payable on MOUs or NDA’s.  However, as a general practice, people are putting it on stamp paper to make it enforceable in the Court of Law.  A document which is stamped acts as valid evidence in a court of law.

Please feel free to consult us at  [email protected]   for drafting and advising and representing any commercial transaction.

[1]  “Instrument” includes every document by which any right or liability is, or purports to be, created, transferred, limited, extended, extinguished or record;”

[2]  https://www.e-stampdutyreadyreckoner.com/faq-stamps-duty.php

[3]  Rule 25 of Trade Marks Rule, 2017- Statement of user in applications— (1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of all the goods or services mentioned in the application.

In case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.

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Assignment of Trademarks in India

Trademarks like any asset can be transferred from one owner to another. The transfers could be temporary through licensing or permanent through an assignment. Assignment of trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. In other words, it is transferring of proprietary rights in the property of the proprietor. The manner in which an assignment can be made are as follows:

Complete assignment of trademarks

In a complete assignment, the owner of the trademark transfers all the rights with respect to the trademark, including the transfer of the rights such as right to further transfer, earn royalties, etc., to another entity.

For example, A, owner of “xyz”, sells his brand to another through an agreement to B. After this, A does not retain any rights with respect to “xyz”.

Partial assignment of trademarks

In a partial assignment, the transfer of ownership is restricted to specific product or service only. The owner may retain the right to further transfer, to earn royalties etc.

For example, A, owner of a tea and a biscuit brand, transfers proprietary rights only with respect to the tea brand and retains the rights over the biscuit brand, this is said to be a partial assignment.

Assignment with goodwill;

This is an assignment where the owner transfers the rights and value of the trademark as associated with the product it sells;

For example, A, owner of “TH” trademark for manufacturing and selling of watches, can assign the trademark along with giving the assignee the right to use the said trademark for the same product.

Assignment without goodwill

This is an assignment where the owner restricts the assignee to use trademark for the products he uses it for. That is, the goodwill attached to the owner’s brand with respect to the product already being sold under such brand, is not transferred to the buyer. This means that assignor & assignee both can use the same trademark but in dissimilar goods or services.

For example, if the owner of the trademark “TH” uses it for manufacturing and selling of watches and decides to assign it without goodwill, it means that the assignee can use the trademark “TH” for any other product other than watches.

Once a trademark is assigned it is important to record the change in ownership with the Trademark Registry. Specific forms with fees have to filed to ensure that the records reflect the ownership details.

Procedure to record the assignment of trademark with the Registry:

Assignment of an unregistered mark:.

Section 39 stipulates that an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned. A request has to be made on Form TM-16 for an unregistered trademark to be assigned or transferred.

Assignment of a registered trademark:

Section 38 stipulates that trade Marks can be either assigned in full or transmitted in part, with or without the goodwill of the business. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. (Rule 68 of the Trademarks rule, 2002).

In a case of assignment or transfer of a single trade mark:

• if made within six months from the date of acquisition of proprietorship, then the official fee is Rs. 5000;
• if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs. 7,500;
• if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs. 10,000.

In case of assignment of more than one trademark:

• if made within six months from the date of acquisition of proprietorship, then the official fee is Rs.5000 for the first mark and Rs.1000 for every additional mark;
• if made after expiration of six months but before 12 months from the date of acquisition of proprietorship, then the official fee is Rs.7,500 for the first mark and Rs.1500 for every additional mark;
• if made after 12 months from date of acquisition of proprietorship, then the official fee is Rs.10,000 for the first mark and Rs.2000 for every additional mark.

From a practical perspective , this is what you need to incorporate in any assignment deed which involves trademarks;

1.  The assignment deed must be in writing where the assignor’s name must be same as it is in the Register of Trademarks, i.e. the owner of the trademark;

2.  It is absolutely necessary that the territorial extent of the assignment is clearly laid down; for example, if the assignee is based in India, then it is a must that the assignment deed contain a clause saying the assignment is for that particular region;

3.  The next obvious thing is, the mark/marks that the proprietor wants to assign must be mentioned clearly;

4.  The consideration that the assignee needs to pay should be mentioned as well; the standard phrase of “good and valuable consideration” wouldn’t hold good; The stamp duty has to be calculated on the basis of the consideration.

5.  The effective date of the assignment must be laid down clearly;

6.  The most important part of an assignment deed is to mention if the assignment is along with the goodwill or not.

As can be noted, transfer of proprietary rights in trademark is similar to transfer of any other asset; Trademarks are valuable assets since they quantify a company’s reputation and goodwill. While making sure the assignment is in order you also have to keep the records of the trademark registry updated with these changes.

This article has been authored by Durga Bhatt , an IP Law practitioner.

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Assignment of Trademark

GENERAL UNDERSTANDING:

As physical properties are transferred, the same way trademarks are also transferred. This transfer of trademark is called Assignment of trademark. In general terms, Assignment means transfer of title, rights, interest and benefits from one person to another person.

Thus, Assignment of trademark means transfer of Owner’s title, rights, interest and benefits to other person. The transferring party is called as “Assignor” and the receiving party is called as “Assignee”.

STATUTORY DEFINITION:

Section 2(1)(b) of the Trade Marks Act, 1999 “Assignment” means an assignment in writing by the act of the parties concerned;

WHO CAN ASSIGN A TRADEMARK:

As per section 37 of the Trade Marks Act, 1999, the person entered in the register of trademarks, as the proprietor of a trademark, shall have power to assign a trade mark and to give effectual receipt of for any consideration for such assignment.

ASSIGNABILITY OF REGISTERED OR UNREGISTERED TRADEMARK:-

As per section 38 of the Act, a registered trademark can be transferred with or without the Goodwill of the business concerned either in respect of all the goods or services in respect of which the said trademark is registered or of some of the goods or service.

Moreover, as per section 39 of the Act, an unregistered trademark may be assigned with or without the Goodwill of the business concerned.

  TYPES OF ASSIGNMENT:-

1. Assignment with Goodwill of Business: Where an assignor assigns to the assignee, the value, rights and entitlements also, as associated with a trademark with respect to the goods or services already in use by the assignor. After taking over the goodwill associated with the trademark, the assignee is free to use the trademark assigned to him for all goods or services including for the goods or services which were already in use by the Assignor. Such assignment is called assignment with Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr.  X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to clothing and footwear alongwith the Goodwill associated with trademark “TM”.

In this case, Mr. X has also assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear as well as for other goods or services. Therefore, Mr. Y is eligible to use the said trademark “TM”, for clothing and footwear including other goods or service dealt by Mr. Y.

2. Assignment without the Goodwill of Business: Where an assignor assigns to the assignee, the right and entitlements in a trademark with respect to the goods or services which are not in use by the assignor. In other words, where the assignor restricts the assignee with a condition that the assignee is not entitled to use the trademark assigned in relation to the goods or services already in use by the assignor. Such assignment is called assignment without the Goodwill of Business.

For Example: Mr. X is the owner of a trademark “TM” who is already using the said trademark “TM” in relation to clothing and footwear. Mr. X assign to Mr. Y the said trademark “TM” through an agreement (in writing) in relation to goods or services other than clothing and footwear without assigning the Goodwill associated with trademark “TM”.

In this case, Mr. X has not assigned to Mr. Y, the Goodwill associated with trademark “TM” for the business of clothing and footwear. Therefore, Mr. Y is not eligible to use the said trademark “TM”, for clothing and footwear. Thus, in case, Mr. Y wishes to use the said trademark “TM” in relation to other goods or services then he will be required to create separate Goodwill for trademark “TM” for such other goods or services dealt by him.

RESTRICTION ON ASSIGNMENT OF TRADEMARK:-

1. Parallel use Restriction: Where assignment results in creation of exclusive right in different persons, in relation to same or similar goods or services and the use of the trademark will be likely to deceive or cause confusion. Thus, multiple exclusive right in relation to same or similar goods or services, in different person is not allowed. This prevents the parallel use of a trademark by more than one person concerned in relation to same or similar goods or services. (Section-40)

2. Multiple Territorial use Restriction: Where the assignment results in creation of exclusive right, in different person in different parts of India, in relation to same or similar goods or services. Thus, assigning of scattered right in different parts of India is not allowed. (Section-41)  

PROCEDURE FOR ASSIGNMENT OF TRADEMARK:

REGISTRATION OF ASSIGNMENT OF TRADEMARK:

1. A person (subsequent proprietor) who becomes entitled by way of assignment, shall apply for registration of assignment before the Registrar of trademarks. (section 45)

2. After due satisfaction of the Registrar of trademarks, the Registrar shall enter the details of the assignee (subsequent proprietor) as the proprietor of the trademark assigned to him in respect of goods or services for which the assignment has been made. (section 45)

3. Where the validity of assignment is in dispute between the parties, the Registrar may refuse to register the assignment until the rights of the parties are determined by the competent court. (section 45)

4. Registrar of trademark shall dispose of the application for registration of assignment of trademark within a period of 3 (three) months from the date of receipt of application. (rule 76 of Trade Marks Rules, 2017 )

5. Registrar may, where there is reasonable doubt about the veracity of any statement or any document furnished, may call upon any person who has applied to be registered as proprietor of a registered trademark to furnish such proof or additional proof of title as the Registrar may think fit. (rule 77 of Trade Marks Rules, 2017)

6. Where in the opinion of the Registrar any document produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it as per Chapter IV of the Indian Stamp Act, 1899 . (rule 78 of Trade Marks Rules, 2017)

7. Where the Registrar has allowed the registration of assignment, then there shall be entered in the register the particulars as follows(rule 84 of Trade Marks Rules, 2017):-

a) the name and address of the assignee;

b) the date of assignment;

c) where the assignment is in respect of any right in the trademark, a description of the right assigned;

d) the basis under which the assignment is made; and

e) the date on which the entry is made in the register.

RIGHT OF THE ASSIGNOR ON ASSIGNMENT OF TRADEMARK:

The assignor terminates to have his rights, title or any interest in the trademark, the moment assignment deed is executed in favour of the assignee, irrespective of the fact that the name of the assignee has not been updated in the record of the Registrar of trademarks.

In the matter of Classic Equipments Pvt. Ltd. Vs. Johnson Enterprises, 2009 (41) PTC 385 (Del), it was observed as follows:

“Once an Assignment Deed has executed, the Assignor ceases to have any right, title or interest in the property assigned. It is not open to the Assignor to cancel the assignment by means of communication”.

RIGHTS OF THE ASSIGNEE: WHEN ASSIGNMENT IS COMPLETE BUT REGISTRATION IS PENDING:

Though as per section 45 of the Act, it is mandated that the assignee shall apply before the Registrar of the trademarks to register his title. But this does not mean that recording of assignment of registered trademark asserts all rights or titles or interest in the assignee.

The reason behind this understanding are the opening words of section 45 of the Act, which says “where a person becomes entitled by assignment or transmission of a registered trademark, ……..”. Therefore, the first condition is entitlement of rights, title or interest by way of assignment or transmission of a registered trademark followed by registration of assignment of a registered trademark. Thus right in assignee does exist even before the registration of assignment.

In the matter of M/S. Modi Threads Limited vs M/S. Som Soot Gola Factory And…. on 4 th December, 1990: AIR 1992 Delhi 4, 1992 (22) DRJ 24 was observed as follows:

“It is true that the plaintiffs application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.”

The assignee of a trademark is also entitled to file a civil suit, even though the recording of assignment of registered trademark is pending before the registrar of trademarks. Moreover, section 45 does not confer any title over the trademark assigned. Instead the registration granted under section 45 is only proof of title of the trademark of assignee or the person who acquired it by way of assignment.

IMPORTANT KEY POINTS

√ Assignment is to be in writing;

√  Registered or unregistered both type of marks can be assigned;

√  Assignment can be with or without the goodwill of the business;

√  Event of assignment asserts the rights and title in an assignee not the registration thereof;

√  Registration of assignment is only prima facie proof of title of trademark;

√  Rights in an assignee exists even before registration of assignment of trademark.

Conclusion: –

Assignment of trademarks allows the Proprietor thereof to en-cash their intellect, efforts, time and money. It is equally important to register the assignment of trademark, since on registration the details of the assignee are updated in the register of trademark, this serves as a notice to public at large. Moreover, preparation of assignment agreements are also important as it involves rights, entitlements, interests and obligation including the commercial terms between the assignor and the assignee.

Disclaimer: The entire content of this document has been prepared as per the relevant provisions of the Act and rules made thereunder, applicable at the time of preparation. Though proper care has been taken to ensure accuracy, completeness and reliability of the information provided therein. The users and readers agree that the information provided in this document is not professional advice. Therefore, we assume no responsibility therefrom. Further, this write up shall not be considered as solicitation in any manner.

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Assignment Licencing of Trademarks

Assignment of trademarks:.

Assignment of a trademark occurs when the ownership of Registered/Unregistered Trademark is transferred from one party to another party whether along with or without the goodwill of the business. In case of a registered Trademark, such assignment is required to be recorded in the Register of trademarks.

Can a Trademark be sold in India?

Yes, it can be sold in India.

Assignment of Trademark Procedure

Drafting of a Trademark Assignment Agreement is the most important step in the procedure of assigning the trademark in order to avoid future litigation. The given below are some of the major elements which be obliged while drafting the trademark assignment agreement:

• The effective date of transfer
• Stamp duty is charged under state laws
• Consideration of the trademark assignment
• Public notary
• Signature of both the parties.
• An assignment deed must be filed with the ipindiagov.in

Documents Required to Transfer Trademark

• Trademark Assignment agreement
• Affidavits from both the parties
• Power of attorney
• Other relevant documents like Invoices etc
• Board Resolution in case of Incorporated Company

How much does it Assignment Cost of a brand or Trademark?

Stamp duty on assignment of intellectual property or trademark in india, is registration of assignment deed compulsory in trademark registry, why do you need an attorney/advocate to draft an assignment trademark deed, how do i get a trademark assignment done, how are we different from others.

We are not any call centre agents who are offering pathetic services at markets by outsourcing the work to others with whom one may not get a Chance to interact with!.

We are Intellectual Property Law Firm, with specialization in Trademark Registration. who take pride in the services delivered by us and guarantee your satisfaction with our services and support.

How do you sell/ Buy a trademark?

Is a trademark worth money, how to sell a registered trademark or brand, how to transfer the ownership of trademark who can transfer.

A Trademark is an intellectual property, the same as a any other property like Plot, Land or Flat. Just like an owner of land has the right to sell or transfer his/her property, in the same way, the owner of a trademark also has the right to do the same to his/her trademark.

Assignment means transferring rights, interests, titles and benefits from one person to another. Assignment of a trademark means to transfer the owner's right in a trademark to another person. The transferring party is called the assignor, and the receiving party is called the assignee. An assignment deed must be filed with the relevant IP office in India

Benefits of Trademark Assignment transmission

• Monetary value
• Transfer to third party
• Transfer to own kith and kins
• Assignment and transmission of trademark help the assignee to use the already established trademark in the market to create their base. It also helps the assignee to save money and resources by not spending on marketing to create a brand.
• Legal Proof
• Expansion of Business
• Right to sue for Infringements
• Right of Priority
• Trademark assignment can also be done for some or all of the goods or services for which the trademark has been assigned. For example, a cement company having multiple other businesses like construction, quarrying and interior designing, may assign the trademark of its construction business only.

What is the difference between assignment of trademark and licensing of trademark?

Unregistered trademark be assigned.

Yes, an unregistered trademark can be transferred with or without the goodwill. Assignment deals with the transferring of the rights vested with the trademark of the proprietor, who was using the unregistered trademark over the period of a few years, to a third party.

The major difference between a registered and unregistered trademark is that the latter is not registered under the Trademarks Act, 1999.

Can a trademark be transferred from one person to another?

Advantages of trademark.

• TM allow customers to identify a business as the source of a product or service.
• Trademarks are the basis to create a company's brand and reputation
• Trademarks allow consumers to base their purchasing decisions
• Trademarks help prevent consumer confusion: they indicate the source of the products and a consistent level of quality.

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Assignment and Transmission of Trademark

• Intellectual Property Rights Blogs Subject-wise Law Notes
• Aishwarya Agrawal
• May 23, 2023

Assignment and transmission of trademarks involve transferring ownership rights from one party to another. The Trademark Act provides guidelines and conditions for such assignments and transmissions, distinguishing between assignments with or without the goodwill and specifying requirements for registration and documentation.

Meaning of Assignment and Transmission of Trademark

Assignment and transmission of a trademark refer to the legal process by which the ownership rights of a trademark are transferred from one person or entity to another. This process involves the transfer of the exclusive rights associated with the trademark, which can include the right to use, license, sell or enforce the trademark.

The assignment of a trademark involves the complete transfer of ownership from one party to another. In this case, the assignee (the party receiving the trademark rights) assumes full control and responsibility over the trademark, including the right to use it exclusively for their own commercial purposes. The assignor (the party transferring the trademark rights) relinquishes all rights and interests in the trademark.

On the other hand, the transmission of a trademark typically refers to the transfer of ownership rights in situations where the original owner passes away or there is a change in the ownership due to legal proceedings, inheritance or other circumstances. Transmission may occur through the distribution of assets in a will, the settlement of an estate or a court order.

Both registered and unregistered trademarks can be assigned or transmitted. A registered trademark is one that has been officially registered with the relevant trademark office, providing the owner with statutory rights and protection. An unregistered trademark refers to a mark that has not been formally registered but may still possess some degree of protection based on common law or other legal principles.

Types of Assignment and Transmission of Trademark

Complete assignment and transmission.

Complete Assignment refers to the transfer of all rights associated with a trademark from one individual to another. This includes the rights to further transfer the trademark, receive royalties and exercise full control over its usage. For instance, if proprietor ‘X’ sells all rights of a trademark to proprietor ‘Y’, ‘Y’ becomes the exclusive owner with the freedom to use the trademark as desired, transfer it to others, set guidelines for its usage and receive royalties. No approval from ‘X’ is required in this case.

Partial Assignment

Partial Assignment involves the transfer of ownership restricted to specific services or products. For example, if proprietor ‘X’ has a trademark (♛) related to men’s lifestyle products but only wants to assign it to shoes, ‘X’ can transfer the trademark to ‘Z’ with the condition that ‘Z’ can only use it for shoes. ‘X’ retains the right to use the trademark for all other products. This type of transfer is known as a partial assignment.

Assignment with Goodwill

Assignment with Goodwill refers to the transfer of a trademark along with all the associated rights and values from one person to another. For instance, if ‘X’ assigns and transfers their trademark (♛) to ‘Z’ with all rights and values intact, ‘Z’ gains full rights to use the trademark for men’s lifestyle products or any other future products they manufacture.

Assignment without Goodwill

Assignment without goodwill involves the transfer of a trademark in a way that allows its use for purposes other than the original one. For example, if ‘X’, who deals with men’s lifestyle products, assigns and transfers their trademark (♛) to ‘Z’ with the condition that ‘Z’ can use it for any product except men’s lifestyle products.

Conditions for assignment and transmission as given in section 42

Section 42 of the Trademark Act outlines the conditions for the assignment and transmission of a trademark, specifically when it is not associated with the goodwill of a business. According to this section, the assignment or transmission of a trademark without goodwill will only be effective if the assignee applies to the registrar for directions regarding the advertisement of the assignment. 

The assignee must advertise the assignment within the timeframe specified by the Registrar, which should not exceed six months from the date of the assignment or an extended period of three months if permitted by the Registrar.

However, if the trademark is assigned along with the goodwill of the business for specific goods and services, it will not be considered an assignment without goodwill. Additionally, if the assignment includes goods for export or services used outside of India along with the assignment of goodwill, it is permissible.

Restrictions on Assignment of Trademarks

The Trademark Act imposes certain restrictions on the assignment and transmission of trademarks to prevent confusion among users or the general public. These restrictions include

• Restriction on assignment or transmission that would create multiple exclusive rights.
• Restriction on assignment or transmission that would create exclusive rights in different parts of India.

Process of Assignment and Transmission of Trademark (Section 45)

The process for the assignment and transmission of a trademark, as described in Section 45 of the Trademark Act, involves the following steps:

• Application to the Registrar of Trademarks using Form TM-P, along with duly certified original documents.
• The Registrar will review the application and provide a decision within three months. The decision may include informing the applicant about the assignment or requesting additional proof if there are doubts.
• If the assignment is approved, the Registrar will make an entry in the Register, including details such as the name and address of the assignee, the date of the assignment, a description of the rights assigned (if applicable), the basis of the assignment and the date of entry in the register.
• In case of a dispute between the parties regarding the validity of the assignment or transmission, the registrar may refuse to register it until the rights of the parties have been determined.

Assignment and Transmission of Registered Trademark (Section 38)

Section 38 of the Trademark Act states that a registered trademark can be assigned and transmitted, with or without the goodwill of the business associated with it. This can apply to all the goods or services covered by the registered trademark or only to a specific subset of goods or services.

Assignment and Transmission of Unregistered Trademarks (Section 39)

According to Section 39 of the Trademark Act, an unregistered trademark can also be assigned or transmitted, with or without the goodwill of the business concerned.

Benefits of Assignment and Transmission of Trademark

Expansion of business: By assigning and transmitting a trademark, the owner can expand their business by using the same trademark in multiple locations simultaneously. Additionally, partial authority can be given to assign the trademark to more than one person.

Leveraging an established brand : Assigning and transmitting a trademark allows the assignee to benefit from an already established brand in the market, saving them the effort and resources required to create a new brand.

Legal proof: The assignment and transmission of a trademark serve as legal proof in case of any disputes related to trademark usage. The rights and liabilities associated with the trademark are clearly outlined in a legal document.

Monetary benefits: The owner of the trademark can enjoy monetary benefits through the assignment and transmission process, including any financial gains resulting from the assignment or transmission. Furthermore, operating with the same trademark in multiple locations can increase the value of the brand.

Structural Waterproofing and ORS v. Amit Gupta ORS [93 (2001) DLT 496]

In this case, a dispute arose regarding the assignment and transmission of a trademark. The court highlighted that the registrar has the authority to refuse the registration of the assignment and transmission until a decision is made by the competent court. The plaintiff claimed ownership of the trademark based on a Memorandum of Understanding (MoU) between the parties. 

However, the court rejected the plaintiff’s request for an injunction against the defendant. The court emphasised that a change in the name of the registered proprietor does not automatically render the trademark unsuitable.

Cinni Foundation v. Raj Kumar Shah and Sons [2009 (41) PTC 320 (Del)]

In this case, the trademark “CINNI” was being used by the owner. A deed of assignment had been executed and signed between the parties. However, it was later discovered that the trademark was not registered. The defendant attempted to claim rights over the trademark. The court ruled that according to the law, the assignee acquires no title to the trademark without the registration of the assignment deed. Consequently, the defendant’s claim to the trademark was dismissed.

These cases illustrate the importance of registration and proper documentation in the assignment and transmission of trademarks. Registration provides legal protection and establishes ownership rights, while adherence to the legal requirements ensures the validity and enforceability of the assignment or transmission of the trademark.

Difference between the Assignment and Transmission of the Trademark

Assignment and transmission are two terms often used interchangeably, but they are distinct concepts according to Section 2 of the Trademark Act. In the case of trademark assignment, there is a transfer of ownership of the registered trademark to another party. On the other hand, in the case of trademark transmission, the original owner retains the rights to the trademark but grants limited rights to a third party for its use.

For instance, let’s consider the example of X, the current owner of the trademark “œ,” who decides to assign the trademark to Y. In this scenario, X relinquishes ownership of the trademark and after a proper assignment process, Y becomes the registered owner with full rights to the trademark.

However, if X chooses to transmit the trademark instead, it means that X remains the original owner of the trademark, but grants limited rights and responsibilities to Y for its use.

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manuraj (lawyer)     --> 02 June 2011

trademark assignment

what are the procedure of assignment of trademark.

what is stamp duty of assignment deed of trademark with goodwill(consideration is rs 25000/-)

what is the difference between assignment with or withoput goodwill

assignment form  tm23 or 24?

fees details 

please explain

 1 Replies

On application under section 45 to register a subsequent proprietor in a case of assignment or transfer of a single trade mark-5000.00

If made within six months from the date of acquisition of proprietorship-7500.00

If made after expiration of six months but before 12 months from the date of acquisition of proprietorship and If made after 12 months from date of acquisition of proprietorship-10,000.00

For Stamp duty on assignment deed please check state Stamp Act .

The law is based on common law principle that the goodwill of business was indivisible in which the mark was used and therefore an assignment of trade mark without the goodwill of the business and stock in trade was bad. The modern view is different. The Trade Marks Act, 1994 in the UK abolished such requirement as being of little practical effect as a safeguard to the public. The British Govt. also found that the requirement was a “burden to the trade mark owners and the Registry”. It was proposed to amend present section 42 of the Trade marks Act, 1999 with the modern trend.

An application for assignment under section 42 without goodwill of business isto be made within six months from the date on which the assignment is made, with possible extension of the period by request, made on form TM-21. (See rule 74)

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• Trademark Assignment

Trademark Assignment Deed

• Documents Required

Assignment of Registered & Unregistered Trademark

• Trademark Licensing & Assignment

Sonam Geda & Company

• IPR Services /

Overview of Trademark Assignment

Assignment means transfer and Trademark Assignment is a method of transferring the ownership and proprietary rights of the trademark to a 3rd party with or without the goodwill of the business. It is a transfer of an owner’s rights, title, and interest in a trademark or service mark. The transferring party ("assignor") transfers to the receiving party ("assignee") its property rights in the mark.

As we all know that trademark is intellectual property belonging to the owner, as other property are often sold for price so in the similar approach a trademark can be sold for price.

Usually, Trademark Assignment is initiated when the entire business is sold off, or the company owns many trademarks for brands, and wanted to sell a few of them.

It takes about six to ten months from filing an application for trademark assignment for getting of approval from the Registrar of Trademarks.

As for selling of any property being car or house etc. , a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

Important points to be included in trademark assignment deed:

• The most important clause to be included in Trademark Assignment Deed is Selling Price or Consideration for which transfer is made and stamp duty is calculated on the same consideration.
• Geographical area in which assignee or purchaser can use the brand name
• Details for whether transfer is with Goodwill or without Goodwill

Types of Assignment

A trademark can be assigned in the following different ways: • Complete Assignment • Partial Assignment • Assignment with Goodwill • Assignment without Goodwill

• Complete Assignment – When all the rights vested in a trademark including rights to further transfer, royalties, etc., are legally granted to another entity/person is known as complete assignment of trademark.
• Partial Assignment – Under the partial assignment there are certain restrictions on the transfer of ownership to certain products or services only and the owner of the trademark has the right to further transfer the trademark and earn its royalties. o For example-A, owner of a tea and a biscuit brand, transfers proprietary rights only related to the tea brand and retains the rights to transfer over the biscuit brand. It is known as partial assignment.
• Assignment with goodwill – When the owner transfers all the rights and royalties of the trademark related to all product or service which are owns by owner, is known as assignment with goodwill.
• Assignment without goodwill – when both the parties i.e. seller and buyer can use a same trademark but for different products or services. Owner of trademark does not allow the assignee to trade in the products in which he used to.

In any of the above cases, the assignment or transfer of the trademark must be recorded with the Registrar of Trademarks.

Document Required for Trademark Assignment

In regard to the Trademark Assignment, following documents are needed:

• Assignment Deed
• Affidavit of the Assignor
• ID Proof of the Assignor & Assignee
• Assignment of registered trademark: Registered Trademark can be assignable and transmissible, whether with or without the goodwill of the business concerned and in respect either of all the goods or services in respect of which the trade mark is registered or of some only of those goods or services.
• Assignment of a unregistered trademark: Unregistered trade mark may be assigned or transmitted with or without the goodwill & the ownership of the trademark can be transferred during the examination of the trademark application.

Advantages of Trademark Assignment

• Every assignment of trademark is entered in the records of registry and hence already is a proof of ownership to the trademark.
• Trademark assignment takes lesser time than to register a new brand name.
• During a Trademark Assignment, both the parties are in advantageous position as the assignor gets a good amount for brand name and the assignee will enjoy the already established brand which is known in the market.

Difference between Trademark Licensing & Trademark Assignment

• Licensing and Assignment of trademark are seem to be same but there is lot of difference between two.
• Trademark assignment is a selling of trademark or transfer of an owner’s rights, title, and interest in a trademark or service mark to others and it makes in change of ownership. Whereas, in trademark licensing, few restricted rights are granted to use the trademark with no change in the ownership are given to a third party and licensing of trademark is a permission given to use the brand name for limited period of time.

Limitation For Trademark Assignment

A trademark can be jointly owned by multiple or more than one applicant but there is a restriction on trademark assignment is that Trademark cannot be assigned if the exclusive rights of the trademark vests in more than one person.

Frequently Asked Questions

What is trademark assignment, what is trademark assignment deed.

As for selling of any property being car or house etc. a sale agreement is made between the buyer and the seller in order to transfer the property, so in the same way trademark is transferred by an Assignment deed between the assignor and the assignee and such Assignment Deed is registered and updated with the name of buyer in the records of trademark registry.

What should be included in Trademark Assignment Deed?

In how many ways a trademark can be assigned, which documents are required for assignment of trademark, how registered and unregistered trademark is assigned, what is limitation of trademark assignment, what is difference between trademark and different form of intellectual properties.

A detailed comparative chart of difference between various forms of intellectual properties can be found at the end of this page.

What are the advantages of Trademark assignment?

What is difference between trademark assignment and trademark licensing, difference in different form of intellectual property rights.

• BASIS OF DIFFERENCE
• PROVISIONAL PATENT
• The Trademark Act, 1999 deals with registration and prevention of fraudulent use of trademarks.
• The Copyright Act, 1957 provides for the registration and protection of copyright.
• Registration and protection of Industrial Design is administered by the Design Act, 2000 and rules made there under.
• Registration and protection of Patent is governed by the Patent Act, 1970 and rules made there under.
• Trade Marks Act,1999
• Copyright Act,1957
• Design Act,2000
• Patent Act,1970
• It can include name, symbol, slogans, logo, and or image which identify the business/brand and it makes different from others.
• Protection of original creative works like Music, Books, Articles, drawing, painting,maps,Photographs, Movies, Sculptures, sound recording, choreography, motion pictures,software etc.
• Feature of pattern, configuration, shape, ornaments, composition of lines, or colors applied to any article, packaging and graphic symbols.
• • Novel and original inventions such as machines, processes, manufacture, composition of chemicals and its improvement. • Encourage innovation and commercialization of technological advances.
• • Novel and original inventions such as machines, processes, manufacture, composition of matter and its improvement. • Patent secures inventions that are useful for the world or to the public at large and has some productive use.
• Creative or intellectual creations
• Appearance of products
• Inventions & Idea
• Valid for 10 years but can be made perpetual by renewing it in every 10 years.
• Copyright is valid for the lifetime of the author and 60 years after the death of author.
• Validity of Design is 10 years from the date of its registration.
• • Provisional Patent will be valid for 12 months from the date of filing application of Patent. • Documents has to file for permanent patent within 12 months otherwise it will ne abandoned.
• Patent is valid for 20 years from the day the application is first made but it can’t be renewed.
• 10 years + Renewal
• Lifetime + 60 Years
• • Use within the applied class. • Protect it from anyone using without permission and give right to sell the brand.
• • Copyright owner has authority to transfer the work by licensing, assigning, and other forms of transfers. • Right to reproduce the work, to prepare derivative works, to distribute copies, to perform the work publicly, and to display the work publicly. (depending on the type of work).
• It gives authority to Use, make, sell, import, offer for sell the registered design.
• Entitled to protect from copy of the invention or infringement of Patent.
• It gives right to Use, sell, import, make with idea patented.
• Brand w.r.t. product / services
• Distribute copies & perform work publicly
• Authority to Use, sell, import etc.
• Protect from copy idea
• Parle,Domino’s,Pizzhut,Spykar etc are the brand names.
• Music, pictures, songs, software etc
• packaging and graphic symbols, composition of lines etc.
• New invention in pharmaceutical industry.
• • New invention in pharmaceutical industry. • Certain computer programs may fall within the subject matter protected by both patents and copyrights.
• Brand' "Nike", logos-the Nike tick
• A copyrighted Book
• ™ is used when registration is under process. ® is used when Trademark is registered.
• © is the symbol of copyright.
• There is no symbol to represent Design
• • There is no symbol to represent provisional Patent. • It would be able to use 'Patent Pending' on product any time in 12 months
• No symbol is assigned to registered Patent.
• Application for Trademark registration is made by business owners or owners of product.
• Artists, Architect, Choreographers, Creative Professionals and Author.
• One who creates design can apply for its registration.
• Many inventors/businesses wish to patent their inventions even before they are finalised through a provisional patent.
• Inventors and designers who have invented any original invention or invented with improved function can apply for its registration.
• Artists, Creative Professionals
• Separate application has to file for protection in different countries and hence only effective in India
• Protection is available in most of the countries of the world.
• Design protection is obtained by filing an application in each country/region of interest
• It is a territorial right and therefore applicable within the territory of India and the separate patents required to be filed for each country where protection is required.
• Territorial right
• Most of countries
• Trademark Registration usually takes 12-18 months to complete the process.
• It takes nearly 4–8 months to get a copyright if there is no objection in application filed.Otherwise it takes nearly 1–2 years depending on the application type.
• The time taken for design registration is as per the Design Act, 2000 and rules made there under.
• Patent registration takes a 2-3 years for completion of process. But the owner can claim right over a patent from the date of applying provisional patent.
• 12-18 months
• Intellectual Property in India is governed by the Controller General of Patents, Designs & Trade Marks (CGPDTM).
• All the things related to registration of Copyright are done by Copyright Office, Government of India.
• Intellectual Property in India is governed by the Controller General of Patents , Designs & Trade Marks (CGPDTM).
• Copyright Office

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