You have acquired a brand through a business purchase, or you are selling a trademark as part of a corporate restructuring, or two businesses are merging and the trademark needs to move to the surviving entity. In each case, the legal transfer of trademark ownership requires a properly drafted assignment deed and a correctly filed Form TM-P with the Trademark Registry.
This guide focuses on the practical steps that most applicants get wrong: how to draft the assignment deed with all mandatory clauses, how to navigate the Form TM-P filing on the IP India portal, what stamp duty applies, how the Section 42 advertisement requirement works for assignment without goodwill, and the most common reasons the Registrar rejects assignment applications.
What Is a Trademark Assignment Deed and What Must It Contain?
The assignment deed is the foundational legal document that transfers trademark ownership. Without a properly executed deed, the Form TM-P filing will be rejected by the Registrar. For a general overview of assignment types (complete, partial, with goodwill, without goodwill), see our guide on types of trademark assignment.
Mandatory clauses in the assignment deed:
- Effective date of transfer - the date ownership passes from assignor to assignee
- Full legal names and addresses of both assignor and assignee, with identification (CIN for companies, PAN for individuals)
- Details of the trademark being assigned - registration number, application number, class(es), and description of goods/services
- Whether the assignment is WITH goodwill or WITHOUT goodwill (this determines whether Section 42 advertisement is required)
- Consideration paid - the amount or value exchanged for the assignment (can be nil in case of gift or merger)
- Scope of assignment - complete (all goods/services) or partial (specific goods/services only)
- Clause confirming assignor's authority to transfer - that assignor is the registered proprietor and has the legal right to assign
- Clause on associated trademarks - under Section 44, associated trademarks must be assigned together
- Warranties that no litigation is pending and no third-party claims exist against the trademark
- Signatures of both parties, witnessed, and notarised
Stamp duty: The assignment deed must be executed on non-judicial stamp paper. The stamp duty amount varies by state - typically Rs 100 to Rs 500. For deeds executed outside India, the document must be notarised in the country of execution and can be stamped in India. Unstamped deeds are not admissible as evidence under the Indian Stamp Act, 1899.
Key Terms You Should Know
- Form TM-P: Prescribed form under Rule 75 of Trade Marks Rules, 2017 for recording a subsequent proprietor of a registered trademark by way of assignment or transfer.
- Form TM-M: Used for recording assignment of pending trademark applications (not yet registered). Fee: Rs 900 per mark.
- Section 37: Power of registered proprietor to assign the trademark and receive consideration.
- Section 38: Registered trademarks are assignable with or without goodwill, for all or some goods/services.
- Section 42: Assignment without goodwill - mandatory advertisement in the manner and within the period directed by the Registrar. Non-compliance can void the assignment.
- Section 44: Associated trademarks must be assigned together. Partial assignment of associated marks is not permitted.
- Section 45: Registration of assignment is mandatory within 6 months (extendable by 6 months). Unrecorded assignment is not enforceable against third parties.
- Rule 75: Procedure for filing Form TM-P - prescribes documents, fees, and the Registrar's review process.
How to File Form TM-P on the IP India Portal: Step-by-Step
- Execute and stamp the assignment deed. Both parties sign the deed, get it notarised, and stamp it on non-judicial stamp paper as per applicable state stamp duty. Keep the original - the Registry requires a certified copy.
- Gather all supporting documents. Assignment deed (stamped and notarised), trademark registration certificate, NOC from assignor, ID proof of both parties (PAN/Aadhar/CIN), Power of Attorney if filed through an agent, and affidavit of no pending litigation (now mandatory in practice).
- Log in to the IP India e-filing portal (ipindiaonline.gov.in). Navigate to the e-filing section. Select 'New Request' → choose 'TM-P: Subsequent Proprietor by Way of Assignment or Transfer of Mark.' Enter the trademark registration number being assigned.
- Fill in Part A - mark details. Enter the trademark number, class(es), description of goods/services, and whether the mark is a standard, collective, certification, or series mark.
- Fill in Part B - assignment details. Specify the purpose: 'Assignment with goodwill' or 'Assignment without goodwill.' Enter the date of the assignment deed. For assignment without goodwill, note that Section 42 advertisement will be required.
- Fill in Part C - applicant details. Enter the assignee's name, address, nationality, and identification. Upload signed Power of Attorney if filed through an agent. Attach all supporting documents as PDF attachments.
- Pay the fee and submit. Rs 9,000 per mark (e-filing) for registered trademarks. Rs 900 per mark for pending applications (via Form TM-M). Generate the acknowledgment receipt. The 6-month filing deadline is counted from the date of the assignment deed - not the filing date.
- Await Registrar's examination and advertisement. The Registrar reviews the application, verifies documents, and if satisfied, advertises the assignment in the Trademark Journal. If the Registrar finds discrepancies, an objection notice is issued. The assignee's name is updated in the Register after the advertisement period.
Complete Document Checklist for Form TM-P Filing
- Assignment deed - stamped, notarised, signed by both parties
- Trademark registration certificate (copy) - for registered marks
- NOC (No Objection Certificate) from the assignor confirming consent to transfer
- ID proof - assignor: PAN/CIN/Passport; assignee: PAN/CIN/Passport
- Power of Attorney (Form TM-48) if filing through an agent/attorney
- Affidavit of no pending litigation - confirming no disputes exist regarding the trademark
- Board resolutions of both companies (if corporate entities) authorising the assignment
- Copy of merger/amalgamation order (if assignment is pursuant to court-approved restructuring)
- Consideration receipt - proof of payment (if applicable)
- For assignment without goodwill: Registrar's direction for advertisement (obtained separately) + copy of published advertisement
- For international assignors: deed notarised in the country of execution + Indian stamp duty paid on arrival
Before filing, verify the assignor's ownership and the mark's validity using a trademark search to confirm no conflicts or encumbrances exist.
Assignment With Goodwill vs Without Goodwill: Key Differences
| Parameter | With Goodwill | Without Goodwill |
|---|---|---|
| What Transfers | Mark + reputation + customer base for the registered goods | Mark only - assignee uses it for DIFFERENT goods/services |
| Legal Basis | Section 38 (registered), Section 39 (unregistered) | Section 38 read with Section 42 |
| Advertisement Required? | Not mandatory - Registrar may direct if deemed necessary | MANDATORY under Section 42 - assignee must advertise in the manner and period directed by Registrar |
| Form TM-P Filing | Standard TM-P with deed and documents | TM-P + separate application for Registrar's direction + advertisement copy |
| Risk to Public | Low - consumers continue to associate the mark with the same goods | Higher - risk of consumer confusion if not properly advertised |
| Practical Use | Business acquisitions, mergers, brand sales | Licensing alternatives, brand diversification across unrelated categories |
| Registrar's Scrutiny | Standard review | Enhanced review - Registrar must be satisfied that assignment does not create confusion |
| Section 40 Check | Must not create multiple exclusive rights for same goods in different persons | Same restriction applies - Registrar verifies no conflicting exclusive rights result |
Common Reasons the Registrar Rejects Form TM-P Applications
Assignment deed not stamped - unstamped deeds are inadmissible. The Registrar returns the application with a direction to stamp the deed before resubmission.
Missing NOC from assignor - though technically the deed itself constitutes consent, the Registry now mandates a separate NOC as a practical requirement.
Affidavit of no pending litigation not filed - the Indian Trademark Registry has made this a mandatory attachment in practice. Missing it triggers a deficiency notice.
6-month filing deadline exceeded without extension - Section 45 requires Form TM-P within 6 months. Filing between 6-12 months requires additional fees. Filing after 12 months may be refused entirely.
Associated trademarks not assigned together - under Section 44, associated marks MUST be transferred as a group. If the assignor tries to assign one associated mark without the others, the application is rejected.
Assignment creates multiple exclusive rights under Section 40 - if the assignment results in two different persons having exclusive rights to the same mark for the same goods in the same territory, the Registrar refuses.
Assignment without goodwill - Section 42 advertisement not obtained - the Registrar's direction for advertisement must be obtained separately before or alongside the TM-P filing. Missing this step is a common rejection reason. For resolving coexistence issues, see our guide on trademark coexistence.
Assignment vs Licensing: Which Option Is Right for Your Situation?
| Parameter | Assignment | Licensing |
|---|---|---|
| What Happens | Permanent transfer of ownership - assignor loses all rights | Temporary permission to use - licensor retains ownership |
| Legal Mechanism | Assignment deed + Form TM-P | Registered User agreement + Form TM-U |
| Duration | Permanent (unless partial/conditional) | Fixed term - as agreed (1 year, 5 years, etc.) |
| Revenue Model | One-time consideration (sale price) | Ongoing royalties or periodic fees |
| Control | Assignee has full control over the mark | Licensor retains quality control rights |
| Risk | Assignor loses all brand equity | Licensor risks quality dilution if licensee underperforms |
| Best For | Business sale, M&A, corporate restructuring, exit | Franchising, joint ventures, distribution agreements |
| Registrar Filing | Form TM-P (Rs 9,000/mark) | Form TM-U (Registered User) |
What Happens If You Don't Record the Assignment?
Under Section 45, an unrecorded assignment is not enforceable against third parties. This means the assignee - despite holding the assignment deed - cannot bring an infringement suit under Section 29 because the Register still shows the assignor as proprietor. The assignee also cannot license the mark to others or authorise its use.
The 6-month filing window is critical. Filing Form TM-P within 6 months costs Rs 9,000 per mark. Filing between 6-12 months incurs a higher fee. Filing after 12 months may be refused, leaving the assignee without enforceable rights.
For businesses that have acquired trademarks through M&A transactions, recording the assignment promptly is essential - not just for enforcement but for due diligence by investors, lenders, and partners who check the Register to verify current ownership. For enforcement of newly acquired marks, see our guide on trademark infringement enforcement.
Key Takeaways
The assignment deed must contain the effective date, full party details, mark details (registration number, class, goods/services), whether assignment is with or without goodwill, consideration, and signatures. It must be stamped on non-judicial stamp paper per applicable state stamp duty.
Form TM-P must be filed within 6 months of the assignment deed execution. The fee is Rs 9,000 per mark (e-filing) for registered trademarks. For pending applications, use Form TM-M at Rs 900 per mark.
Assignment without goodwill triggers a mandatory advertisement requirement under Section 42. The Registrar directs the manner and period of advertisement. Non-compliance can void the assignment.
Associated trademarks under Section 44 must be assigned together - partial assignment of associated marks is not permitted. Section 40 prevents assignments that create multiple exclusive rights for the same goods in different persons.
An unrecorded assignment is not enforceable against third parties under Section 45. The assignee cannot bring infringement suits or license the mark until the assignment is recorded in the Register.
Need Help with Trademark Assignment or Form TM-P Filing?
Trademark assignment involves multiple legal and procedural steps - deed drafting, stamp duty compliance, Form TM-P filing, Section 42 advertisement (for without goodwill), and Registrar examination. A single error in the deed or a missed deadline can delay the transfer by months or render it unenforceable.
Explore our trademark assignment services for end-to-end assistance with deed drafting, Form TM-P filing, advertisement coordination, and Registrar liaison.
For queries, reach out at +91 945 945 6700 or WhatsApp us directly.
