Specimen Deed of Assignment of Registered Trademark — Format 2026

What Is Trademark Assignment?

Trademark assignment is the transfer of ownership of a registered (or pending) trademark from the assignor (current owner) to the assignee (new owner). Under Section 37 of the Trade Marks Act, 1999: a registered trademark is assignable and transmissible — either with or without the goodwill of the business concerned. The assignment may be: (a) with goodwill — the trademark and the associated business reputation, customer base, and brand value are transferred together, (b) without goodwill — only the trademark registration is transferred, not the underlying business reputation (this is called "assignment in gross").

Legal Framework — Sections 37-44

Section 37 — Power to assign: The owner of a registered trademark may assign it — with or without goodwill of the business. Section 38 — Restrictions on assignment: (a) An assignment that would create exclusive rights in more than one person for the SAME goods/services in the SAME geographical area within India creates a conflict — such assignment is invalid unless the Registrar approves. (b) An assignment of a trademark in use that would mislead the public or cause confusion is void. Section 39 — Registration of assignments: The assignee must apply to the Registrar of Trade Marks for registration of their title within 6 months of the assignment. The assignment is not effective against third parties until registered. Section 42 — Assignment of unregistered trademark: An unregistered trademark can also be assigned — following the same principles.

Specimen Deed of Assignment — Trademark

[Illustrative format]

DEED OF ASSIGNMENT OF TRADEMARK

This Deed is made on [Date] at [City]

BETWEEN:

[Assignor Name — Company/Individual], [Address] (the "Assignor")

AND

[Assignee Name — Company/Individual], [Address] (the "Assignee")

RECITALS

(a) The Assignor is the registered proprietor of the following trademark(s): Trademark: [Mark], Registration No.: [Number], Class(es): [Number(s)], registered on [Date], valid until [Date].

(b) The Assignor desires to assign the said trademark(s) to the Assignee [with/without] the goodwill of the business in the goods/services for which the trademark is registered, for a consideration of Rs. [Amount].

(c) The Assignee desires to acquire the said trademark(s) on the terms set out herein.

NOW THIS DEED WITNESSETH:

1. Assignment: In consideration of Rs. [Amount] paid by the Assignee to the Assignor (receipt acknowledged), the Assignor hereby assigns, transfers, and conveys to the Assignee ALL right, title, and interest in and to the trademark(s) described above, [TOGETHER WITH / WITHOUT] the goodwill of the business in the goods/services for which the trademark is registered.

2. Rights Transferred: The assignment includes: (a) the right to use the trademark in India for the registered goods/services, (b) the right to renew the trademark registration, (c) the right to institute and defend infringement proceedings, (d) the right to license the trademark to third parties, (e) the right to all associated domain names, social media handles, and digital assets [if applicable].

3. Assignor's Warranties: The Assignor warrants: (a) sole and rightful owner of the trademark, (b) the trademark is validly registered and subsisting, (c) no prior assignment, license, or encumbrance, (d) no infringement proceedings pending, (e) all renewal fees paid up to date, (f) the assignment will not mislead the public or cause confusion.

4. Registration: Both parties shall jointly apply to the Registrar of Trade Marks for registration of this assignment under Section 39 within [30/60/90] days. Registration fee shall be borne by the [Assignee].

5. Indemnity: The Assignor indemnifies the Assignee against all claims arising from: prior use/misuse of the trademark, pending infringement actions, and any defect in the Assignor's title.

6. Transitional Use: The Assignor shall not use the assigned trademark from the date of this Deed — unless the parties agree to a transitional period of [30/90] days for phasing out the Assignor's use.

Registration with Trade Marks Registry

Under Section 39: the assignee must apply to the Registrar of Trade Marks (TMR) for registration of their title. Procedure: (a) file Form TM-P (Application for Registration of Assignment/Transmission) with the TMR, (b) attach: the original assignment deed (or certified copy), consent of the assignor (Form TM-28), and prescribed fee, (c) fee: Rs. 5,000 per mark per class (for e-filing) or Rs. 5,500 (physical filing) — as per Trade Marks Rules, 2017 (as amended), (d) the Registrar examines the application and, if satisfied: registers the assignment in the Register of Trade Marks, (e) the Assignee's name is entered as the new proprietor. Until registered: the assignment is not effective against third parties — the Assignor's name remains on the register.

Assignment With vs Without Goodwill

Tax Implications

(a) Income Tax — Assignor: Consideration is taxable as capital gains if the trademark is a capital asset (LTCG if held >24 months for unlisted; 12 months for listed). If the trademark was developed in the course of business: it may be taxable as business income. (b) GST: Permanent transfer of trademark rights: 18% GST (supply of services). Temporary transfer/license: 12% GST. (c) Stamp Duty: Varies by state — typically nominal (Rs. 100-500) as assignment of intangible property.

FEMA Compliance

For cross-border trademark assignments (Indian company assigning to foreign entity or vice versa): (a) payment for the assignment must be at arm's length (fair market value), (b) if Indian entity pays foreign entity: withholding tax (TDS) under Section 195 IT Act + compliance with RBI guidelines on royalty/IP payments, (c) if foreign entity pays Indian entity: receipt in convertible foreign exchange, (d) reporting as per FEMA regulations. Transfer pricing regulations apply if the parties are associated enterprises.