- Trademark Registration
- Trademark Search & Clearance
- Trademark Objection & Examination Reply
- Trademark Opposition & Rectification
- Trademark Renewal & Portfolio Management
- Trademark Assignment & Licensing
- Copyright Registration
- Industrial Design Registration
- IP Infringement & Enforcement
- IP Licensing & Commercialisation
- Technology Transfer Agreements
- Brand Protection & IP Strategy
Trademark Assignment & Licensing
A trademark assignment transfers ownership of a mark from one person to another, while a licence lets someone else use the mark and leaves ownership where it is. Both should be in writing, and an assignment of a registered mark has to be recorded with the Trade Marks Registry before the new owner can rely on it.
Sections 37 to 45 of the Trade Marks Act, 1999 govern assignment, with or without the goodwill of the business. Sections 48 and 49 provide for a licensee to be recorded as a registered user. The deed is also liable to stamp duty under the law of the state where it is signed.
When you need it
When a founder owns the mark personally
Marks are often filed in a founder’s name before the company exists. Investors expect them to be assigned to the company.
When a business or brand is sold
The buyer needs a valid assignment of each mark, recorded on the register, as part of completing the purchase.
When a group is reorganised
Moving marks to a holding company, or between group companies, needs an assignment and a licence back to the companies that use them.
When appointing a franchisee or distributor
Anyone else using the mark should do so under a written licence that controls how it is used.
When a co-owner leaves
A jointly owned mark needs a clear transfer when one owner exits, or neither can deal with it cleanly later.
How the process works
Five stages, from checking title to recording the change. Timings are typical, not promised.
- 1
Check what is being transferred
A few working daysConfirm who is recorded as the owner, the status of each mark, the classes covered and any existing licences, charges or disputes. Unregistered marks and pending applications are listed too.
Documents
- Registration or application numbers
- Any earlier assignment or licence
- 2
Settle the commercial terms
Depends on the partiesFor an assignment: whether the goodwill goes with the mark, the price, and any territory or goods held back. For a licence: exclusivity, territory, term, royalty, quality standards and the right to sub-license.
- 3
Draft the deed or licence
Commonly within a weekPrepare the assignment deed or the licence agreement. A licence should give the owner real control over the quality of the goods or services sold under the mark, with the right to inspect and to end the licence.
- 4
Stamp and sign
At signingPay the stamp duty that applies in the state where the document is executed, and have it signed by authorised signatories of both parties.
Documents
- Board resolutions or other authority to sign
- Identity and address details of the parties
- 5
Record it with the Registry
Filed after signing; processing time is set by the RegistryApply to the Registrar on Form TM-P to record the assignee as the new owner, with the deed. A licensee can be recorded as a registered user on Form TM-U. The Registry updates the register once it is satisfied with the documents.
Common questions
An assignment changes who owns the mark. A licence gives permission to use it for a time, in a territory and for stated goods or services, while the owner keeps title and control.
For a registered mark, yes in practice. Section 45 requires the assignee to apply to the Registrar to record its title, and until that is done the assignment is not effective against a person who acquires a conflicting interest without knowing of it.
Yes. Section 38 allows a mark to be assigned with or without the goodwill of the business. An assignment without goodwill has extra steps under section 42, including applying to the Registrar for directions on advertising it within six months.
Yes. An application can be assigned before registration, and the assignee is brought on record as the applicant. Unregistered marks can also be assigned.
No. Recording a registered user is optional, and use under a written licence counts as permitted use. Registration helps, because a registered user can, subject to the agreement, bring infringement proceedings in its own name.
A mark tells buyers where goods come from. If the owner has no control over what the licensee sells under it, the mark can lose its distinctiveness and become open to challenge. The licence should set standards and allow inspection.
Yes. The rate depends on the state where the deed is signed and how its stamp law classifies the document. A deed that is not properly stamped cannot be relied on as evidence until the duty and any penalty are paid.
Related
To discuss an assignment or licence, write to info@ireniclegal.com or call +91 96547 47331. Written by Adv. Kanika Marwaha Bindal; last updated 7 October 2026.