Sell or transfer a trademark the way any other asset is transferred. LegalWiz.in drafts the assignment agreement, advises on stamp duty and files the transfer with the Registry.
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What an assignment transfers, how it differs from a licence, and why founders choose LegalWiz.in to handle one.
A trademark is intellectual property, and like any other asset its owner has the right to sell it, license it or transfer it. A transfer is made either through a trademark assignment agreement or through a licence, and the two do different things.
An assignment changes the ownership of the brand. A licence does not: the rights stay with the original owner and a limited set of them is granted to a third party for a period and on terms. If you want to keep the mark and let someone else use it, a licence is what you want, not an assignment.
An assignment can be made with or without the goodwill of the business behind the mark, and where the trademark is registered the assignment must be recorded in the Register of Trade Marks.
Everything below is handled by your relationship manager and a trademark lawyer. You settle the commercial terms; we put them into a deed the Registry will accept.
Government fees and stamp duty are charged at actuals. Stamp duty on the deed is calculated on the consideration the parties agree and the rate varies by state.
Every right in the trademark passes to the buyer, including the rights to transfer it again, to earn royalties and to license it.
Ownership transfers only for the products or services the assignment agreement names, and the assignor keeps the rest.
The value and the rights attached to the mark transfer too, so the new owner may use it for the goods already sold under it and for anything new they make.
Also called a gross assignment. The buyer is prohibited from using the brand for the products the seller already sells under it, so the goodwill in those does not transfer.
Building a brand costs money, time and effort. An assignment is what lets the owner encash a value that until then existed only on paper, and the assignor can always attach conditions to the transfer.
In any dispute about the mark, the assignee’s legal rights are established through the assignment agreement. The Registry examines the validity of its clauses and publishes the assignment in the Trade Marks Journal.
The assignee deals in a brand name that already exists and is already recognised, which saves the time, effort and investment that building brand value from nothing would cost.
Where the arrangement is a licence, the assignor’s business grows as more vendors join in building the brand, and the value of the mark rises on the combined effort of both sides.
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A short checklist. Scanned copies are enough to begin, and your relationship manager will tell you if anything needs to be re-shared in a clearer format.
The certificate of trademark registration, where the mark is registered.
The name and description of both the assignor and the assignee.
From the original owner of the registered trademark.
Step 01
Step 02
Step 03
Subject to government processing time.
A typical assignment is drafted and filed in 5 to 8 working days. Here is where that time goes.
2 of 7 working days
3 of 7 working days
2 of 7 working days
Subject to government processing time. The Registry normally takes 6 to 8 months to update the record of the transfer.
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The assignment agreement, sometimes called the trademark assignment document, is entered into between the assignor and the assignee.
Once it is duly executed, the online assignment procedure follows: an application is filed with the Registry in the prescribed form, through a registered trademark attorney, with the prescribed fee.
Yes. Trademarks, like any other asset, can be transferred from one owner to another, whether by assignment or through a merger or amalgamation between two entities.
An unregistered trademark can be assigned as well, with or without goodwill, by filing an application with the Registry.
Like any agreement, the deed must be executed after paying stamp duty at the rate the relevant state government prescribes. The rate is calculated on the consideration the parties agree.
The effective date of the assignment should also be stated expressly in the deed. See the next answer for why that matters.
The Trade Marks Registry normally takes up to six to eight months to update the record of a transfer.
Where the deed states the effective date of transfer expressly, the assignee enjoys the rights conferred from that date, not from the date the Registry catches up.
The Registry has prescribed ₹9,000 as the fee payable on an application to transfer trademark ownership.
That is the state’s charge and is separate from our professional fee and from the stamp duty on the deed.
Yes. The owner can grant the right to use a trademark without transferring ownership of it, which is a licence.
It is put into effect by an agreement setting out all the terms, conditions and covenants the parties agree. Ownership stays where it is, which is the difference between a licence and an assignment.
Two, and both exist to stop one mark ending up with two owners in the market:
Brand disputes rarely begin in court. They usually start with customer confusion, when a familiar logo looks slightly off or product name sounds close enough to mislead.
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