An assignment deed transfers a trademark between the parties. It does not change the register. Until Form TM-P is recorded, the Registry still shows the assignor as proprietor, and the assignee cannot sue anyone for infringement.
Starting at
₹9,999 onwards
TM assignment
Buyers and sellers of brands, mergers, group restructuring
Timeline
Apply within 6 months of the assignment
Assignment is a transfer of ownership by act of the parties under Section 37. Transmission is a transfer by operation of law - on death, merger, amalgamation or devolution. Licensing transfers only a right to use, and ownership stays put. Section 45 provides that where a person becomes entitled to a registered trademark by assignment or transmission, he shall apply to the Registrar to register his title, and that application should be made within six months from the date the assignment takes effect.
TL;DR
With goodwill, the mark moves with the business and its reputation. Without goodwill - a gross assignment - Section 42 requires the assignee to apply to the Registrar for directions on advertisement, and to advertise as directed. Miss that and the assignment does not take effect. It is the most commonly overlooked step in a gross assignment.
Section 42
Where a mark is assigned otherwise than with the goodwill of the business, the assignment does not take effect unless the assignee applies for directions on advertisement and advertises as directed, within the period directed.
Section 45(2)
Until an application under Section 45(1) is made, the assignment document is not admitted in evidence as proof of title in any proceeding, except where the Registrar or court otherwise directs.
Form TM-P vs Form TM-M
Registered marks use TM-P. Where the mark is still a pending application, the transfer is recorded in Form TM-M at ₹900 per mark. Getting this wrong causes the filing to be returned.
Gross assignment
An assignment without goodwill - the mark transfers but the assignor keeps the business, or keeps the mark for other goods.
The mark moves together with the business and its reputation. The assignee takes it for all the goods or services it covers.
A gross assignment. Section 42 imposes an advertisement requirement that is easy to miss and fatal if missed.
Three consequences, in ascending order of seriousness.
01
Whether the assignment is with or without goodwill decides whether Section 42 applies, and that determines the whole filing route.
02
For a gross assignment we apply to the Registrar for directions with respect to advertisement, and advertise in the form, manner and period directed.
03
Within six months of the date the assignment takes effect. The Registrar may allow a further period on application; beyond that recordal becomes discretionary and slower.
04
The assignee is recorded as proprietor. Renewal, enforcement and evidentiary standing all follow from this entry, not from the deed.
Upload via our secure portal. We pre-check every scan before filing - cuts portal rejections by ~90%.
Still unsure if TM assignment is right for your case? Book a free 20-minute consult - a senior CA / CS will walk you through your specifics.
Still have questions?
Book a free 20-minute consult with a senior partner - we'll walk through your case and outline next steps.
Talk to a partner →A senior CA / CS will get on a call with you, confirm scope and start the work - usually within 24 hours.
