Trademark Assignment / Transfer

The primary legislation governing trademark assignment in India is the Trade Marks Act, 1999. Sections 37 to 44 of the Act deal with the assignment and transmission of trademarks. Additionally, the Trade Marks Rules, 2017 prescribe the procedures and forms for recording an assignment. The Act allows assignment with or without goodwill of the business, and imposes certain restrictions on assignment that may cause deception or confusion.

The authority responsible for processing trademark assignments is the Controller General of Patents, Designs and Trade Marks (CGPDTM), commonly known as the Indian Trademark Registry. The official website is www.ipindia.gov.in. All applications for recording an assignment must be filed through the e-filing portal of the Trademark Registry.

The process for recording a trademark assignment involves the following steps:

1. Drafting the Assignment Deed: The assignor and assignee execute a deed of assignment that clearly identifies the trademark, the parties, and the terms of transfer.
2. Filing Form TM-P: The application for recording the assignment is filed in Form TM-P along with the prescribed fee. The form must be signed by both parties or their authorized agents.
3. Supporting Documents: Attach a copy of the assignment deed, proof of payment of fee, and a statement of case explaining the circumstances of the assignment.
4. Examination by Registry: The Trademark Registry examines the application to ensure compliance with the Act. If any objections arise, the applicant is given an opportunity to respond.
5. Registration: Upon satisfaction, the Registry records the assignment and issues a certificate of registration of assignment.

The key form required is Form TM-P (Application for registration of assignment or transmission). This form is used for both registered trademarks and pending applications. Additionally, if the assignment involves a change in name or address of the proprietor, Form TM-M may also be required. All forms are available on the IP India website.

Any person who is the proprietor of a registered trademark or a pending trademark application can assign it. The assignee must be a person capable of holding property under Indian law. There is no restriction on nationality or residence. However, the assignment must not be likely to cause deception or confusion among the public. If the assignment is of a trademark that is associated with another trademark, both must be assigned together.

The timeline for recording an assignment depends on the workload of the Trademark Registry and the complexity of the case. The process involves filing, examination, and issuance of the certificate. No specific time estimate can be provided as it varies from case to case.

The government fees for filing Form TM-P are as follows:

Note: Fees are subject to change as per the latest schedule of fees under the Trade Marks Rules, 2017.