What is Trademark Assignment?
Trademark assignment refers to the legal transfer of ownership rights of a trademark, whether registered or unregistered, from one party to another. This process is contractual in nature and is executed through a written document called an assignment deed. Once assigned, the assignee becomes the new legal owner of the trademark and may use, license, or further assign it.
This is commonly done when a company wants to:
- Sell its trademark to another business
- Transfer rights during mergers or acquisitions
- Monetize its intellectual property
- License the trademark under specific terms
Under Indian law, all trademark assignments must be recorded with the Registrar of Trademarks through Form TM-P. Not doing so may leave the assignment unenforceable.
Key Legal Basis
The Trade Marks Act, 1999 (Sections 37 to 45) lays down the rules for trademark assignment and ownership transfer in India. It allows the trademark owner to transfer rights through a written assignment deed, which must be signed by both parties.
As per Rule 75 of the Trade Marks Rules, 2017, the assignment must be registered with the Registrar within six months. Failure to do so may make the transfer legally unenforceable.
What is Ownership Transfer in Trademarks?
While assignment is a deliberate act, ownership transfer can take place through legal events without any contractual agreement between two parties. In such cases, the trademark is passed on to a new owner as a result of circumstances like:
- Succession or inheritance
- Court orders or liquidation
- Mergers or corporate restructuring
- Transfer by operation of law (e.g., insolvency proceedings)
For example, if a company is merged with another, all assets, including trademarks, are automatically transferred to the surviving entity. There is no formal assignment deed, but the change in ownership still needs to be reflected in the Trademark Registry records.
This method is often referred to as “transmission” under the law.
Key Differences Between Trademark Assignment and Ownership Transfer
| Feature | Trademark Assignment | Trademark Ownership Transfer |
| Legal Basis | Written agreement between two parties | May happen by law or legal event |
| Registration Requirement | Mandatory registration with the Trademark Registry | Usually needs update, but not always contractual |
| Type of Transfer | Voluntary and contractual | Automatic or by operation of law |
| Example | Selling a trademark to another company | Trademark passing to heir after owner’s death |
Types of Trademark Assignment
- Complete AssignmentIn this type, the entire ownership and all associated rights (including rights to license or transfer further) are transferred to the new owner.
- Partial AssignmentOnly certain rights or use-cases are transferred. For example, the trademark may be assigned for use only in a specific product category or region.
- Assignment with GoodwillThe trademark is transferred along with the reputation and customer loyalty it has earned. It implies the new owner will continue the same line of business or benefit from its past usage.
- Assignment without GoodwillOnly the trademark is transferred, and the assignor retains the business reputation or goodwill. The new owner uses the mark for different goods/services or in unrelated markets.
Why Should You Register a Trademark Assignment?
- Avoid Future DisputesUnregistered assignments can lead to ownership conflicts and enforcement issues.
- Protect Legal OwnershipOnly registered owners can file for infringement or misuse of the mark.
- Enable Licensing or SellingA registered assignee can further commercialize the trademark.
- Transparency in Public RecordsRegistration updates the Trademark Registry, providing clarity to third parties and competitors.
How to Register a Trademark Assignment in India?
Step-by-Step Process:
- Draft an Assignment DeedInclude details of the assignor, assignee, trademark, consideration paid, and scope of transfer.
- Execute and Notarize the DeedEnsure both parties sign the deed and notarize it for legal validity.
- File Form TM-PVisit https://ipindiaonline.gov.in to submit Form TM-P online with applicable fees.
- Attach Required DocumentsInclude the assignment deed, ID proofs, No Objection Certificate (if needed), and Power of Attorney.
- Respond to Examination ReportThe Registrar may raise queries. Reply to any objections or clarifications promptly.
- Publication in Trade Marks JournalThe proposed assignment is advertised for transparency.
- Final Approval & Record EntryUpon no objections or successful response, the transfer is recorded in the Trademark Register.
Note: If the mark is registered, assignment without goodwill also needs prior approval from the Registrar
Benefits of Trademark Assignment
- Monetization of Intellectual PropertyTrademark owners can generate direct income by selling or licensing the mark to others in need of an established brand.
- Brand LeverageCompanies can expand market presence by assigning their trademark to subsidiaries, partners, or franchisees strategically.
- Exit PlanningBusiness owners looking to exit can benefit financially by assigning valuable trademarks to interested buyers.
- Dispute ResolutionRegistered assignment deeds reduce ambiguity in ownership and protect against misuse or unauthorized claims.
Challenges in Trademark Assignment
- Legal DisputesIncomplete or vaguely worded assignment deeds often lead to litigation over the actual ownership or scope of rights transferred.
- Approval DelaysApplications with missing documents or errors can cause long delays at the Trademark Registry during scrutiny and publication.
- Cross-Border ComplicationsAssignments involving foreign entities must align with both Indian law and the trademark laws of the assignee’s country, increasing complexity.
- Lack of AwarenessStartups and small businesses often ignore assignment formalities, risking invalidation of rights and inability to enforce them in court.
Real-Life Example
A popular retail brand was acquired by a larger chain through a full acquisition deal. However, the trademark assignment was never registered with IPIndia. Later, another business began using the same brand name, claiming no record of ownership existed. The delay in registration led to prolonged legal disputes and loss of brand reputation.
This example shows how failure to register an assignment can weaken legal rights, even when ownership is legitimate.
What Happens If Trademark Assignment Is Not Registered?
An unregistered assignment can result in:
- No legal standing in court to enforce the trademark
- Loss of exclusive rights over the brand
- Trademark appearing as still owned by the previous party in public records
- Revenue loss in resale or licensing opportunities
- Risk of the trademark being treated as abandoned by the Registry
Conclusion
Trademark assignment and ownership transfer serve distinct roles under Indian IP law. While assignment requires formal agreements, ownership transfer may happen naturally. Registering the change with the Trademark Registry is critical for legal recognition, dispute protection, and business continuity.
Suggested Read :
Trademark Clearance Certificate
Types of Trademark Assignments
International Trademark Assignment
Trademark Renewal vs Trademark Restoration
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