Trademark Assignment and Licensing in India: Transfer of Ownership Rules

A trademark is an asset. It can be sold, licensed, split, and transferred, and in India the rules for doing that sit in Sections 37 to 49 of the Trade Marks Act, 1999 and the Trade Marks Rules, 2017.

Whether you are acquiring a brand, selling part of a portfolio, or licensing a mark to a distributor, the paperwork decides whether the transaction is enforceable. This guide covers assignment and licensing in India end to end.

Pro tip: before you buy or license a mark, check its status and look for conflicts. Start with a free trademark check.

Related: How to Register a Trademark in India: Complete 2026 Guide

What Is a Trademark Assignment?

An assignment is the transfer of ownership of a trademark from the assignor to the assignee. Once it is done, the assignee is the new proprietor with all the rights that go with the mark. Our glossary defines the terms used below.

Assignments come in two forms.

Assignment With Goodwill

The mark transfers along with the business goodwill attached to it. This is the usual case, and the assignee takes the reputation and customer recognition as well as the registration.

Assignment Without Goodwill

The mark transfers without the goodwill of the business, which Section 38 permits. The Registrar can impose restrictions to prevent consumer confusion.

Important: under Section 40, the Registrar can refuse to record an assignment without goodwill where it would be against the public interest, or likely to deceive or confuse.

Requirements for a Valid Assignment

1. The Assignment Deed

The transfer must be in writing, in an Assignment Deed. A workable deed covers:

• Parties: full names, addresses, and entity details of assignor and assignee
• Mark details: registration number, description, classes, and goods or services
• Consideration: the price or other consideration for the transfer
• Goodwill: whether the assignment is with or without goodwill
• Effective date: when the transfer takes effect
• Warranties: representations about validity and ownership
• Indemnity: protection against third-party claims

Execute the deed on the appropriate stamp paper under the Indian Stamp Act as it applies in the relevant state.

2. Form TM-P: Recording It With the Registry

After the deed is executed, the assignment must be recorded with the Trade Marks Registry on Form TM-P, with:

• a copy of the executed Assignment Deed
• the prescribed fee
• a Power of Attorney, if you are filing through an agent

The fee is INR 9,000 per mark for online filing. There is no lower rate for individuals or startups on a recordal. The INR 4,500 figure that owners often remember is the TM-A application fee for individuals, startups, and small enterprises, and it does not apply here. Paper filing costs more.

Recordal timelines depend on Registry workload rather than a published service standard, so build the wait into any deal timetable. The assignment itself is legally effective from the date stated in the deed.

3. Advertisement

Under Section 44, the Registrar may direct that the assignment be advertised in the Trademark Journal, so the public has notice and can object. That usually happens when:

• the assignment is without goodwill
• the assignment covers only some goods or services within a class
• there is a risk of consumer confusion

Can Unregistered Marks Be Assigned?

Yes. Under Section 39, an unregistered mark can be assigned, but only together with the goodwill of the business. Without a registration, the mark's identity is inseparable from the goodwill, so it cannot travel on its own.

Partial Assignments

A mark can be partially assigned, so the assignor transfers it for some of the goods or services and keeps the rest.

For example, a mark registered in Classes 25 (clothing) and 41 (entertainment) can be assigned in Class 25 while the owner keeps Class 41.

Restrictions

Under Section 40, the Registrar can refuse a partial assignment that would create exclusive rights in more than one person for the same or similar goods and services, where that would cause confusion.

What Is Trademark Licensing?

A license lets a third party use the mark while the owner keeps ownership. In India this runs through the Registered User provisions in Sections 48 to 54.

Registered Users (Section 49)

The proprietor of a registered mark can apply to have another person registered as a Registered User. The application must set out:

• the relationship between the proprietor and the proposed Registered User
• the degree of control the proprietor will exercise over quality
• the goods or services the mark will be used for
• the territory and the duration of the permitted use

Why Register a Licensee?

1. Use by the Registered User counts as use by the proprietor, which protects against non-use cancellation.
2. Standing to sue, in defined circumstances. Under Section 52, a Registered User can call on the proprietor to take infringement proceedings. If the proprietor refuses or fails to act within two months, the Registered User can then sue in its own name, joining the proprietor as a defendant. It is a fallback right, not a free-standing one.
3. Public notice. Third parties can see that the use is licensed.

Quality Control

Quality control is the part of a license that people skip and later regret. The whole system rests on consumers being able to trust that goods carrying a mark meet consistent standards, whoever actually made them.

What Section 49(1)(c) Expects

The Registered User application must disclose the degree of control the proprietor will exercise, which in practice means:

• quality specifications for the goods or services
• inspection and audit rights
• compliance monitoring
• the right to terminate for quality failures

If Quality Control Is Missing

• the mark can become vulnerable to cancellation on the ground that it has become misleading
• the arrangement may be treated as a naked license, which can cost you the rights in the mark
• inconsistent quality creates consumer and regulatory problems of its own

Assignment or License?

Tax Points to Check

Assignments and licenses carry tax consequences in India:

• Capital gains. Assigning a trademark is the transfer of a capital asset and can attract capital gains tax.
• GST. Royalties are subject to Goods and Services Tax at the applicable rate.
• TDS. Tax Deducted at Source can apply to royalty payments under Section 194J of the Income Tax Act.
• Cross-border deals. Withholding tax may apply under the relevant Double Taxation Avoidance Agreement. Foreign applicants should also read our India filing guide.

Take tax advice before you structure the deal, particularly on anything cross-border.

Common Mistakes

1. Not recording the assignment. The deed may bind the parties, but without recordal on Form TM-P the assignee is not the owner of record and enforcement gets difficult.
2. A thin Assignment Deed. Missing consideration, goodwill, or warranty terms is how disputes start.
3. Assigning without goodwill for no clear reason. The Registrar can refuse to record it.
4. Leaving associated marks behind. If you own a word mark and a logo, transfer both, or you split the brand across two owners.
5. Forgetting pending applications. Include them in the assignment alongside the registrations.

The GTC advantage: our attorneys draft the deed and handle the full recordal with the Indian Trade Marks Registry, including cross-border transfers. Get help with your trademark transfer

How We Can Help

Our team handles India assignments and licensing, including:

• drafting Assignment Deeds and license agreements
• filing Form TM-P for recordal with the Registry
• due diligence on portfolios for M&A transactions
• Registered User applications
• structuring cross-border transfers

For the wider India picture, see our India trademark service and the India country guide.

Sources

• Trade Marks Registry, IP India
• The Trade Marks Act, 1999