Sell a Trademark After Registration

A trademark is a valuable asset for any business. It represents the brand’s identity, builds customer trust, and protects the business from unauthorized use. However, there may come a time when an entrepreneur wants to transfer or sell a trademark to another party. Whether it’s due to a business merger, rebranding, or a strategic decision, transferring a trademark is a legal process that must be done correctly.

In this guide, we will explain how to transfer or sell a trademark after registration, the legal requirements, and the steps involved.

Understanding Trademark Transfer

A trademark transfer, also known as a trademark assignment, is the legal process of transferring ownership of a registered trademark from one entity to another. This transfer can be partial or complete, depending on the agreement between the parties.

There are two main types of trademark assignments:

1. Complete Assignment – The owner transfers all rights, including ownership, usage, and benefits, to the new owner. The original owner has no further claim over the trademark.
2. Partial Assignment – The owner transfers certain rights to the new owner but retains some rights. This is useful when a brand owner wants to assign the trademark for specific products or services while keeping others.

Apart from assignments, a trademark can also be transferred through licensing. Licensing allows another party to use the trademark under specific conditions while ownership remains unchanged.

Reasons to Transfer or Sell a Trademark

Entrepreneurs and businesses may decide to transfer or sell a trademark for various reasons, including:

• Business Merger or Acquisition – When one company acquires another, trademarks are often transferred as part of the deal.
• Rebranding or Change in Business Strategy – A business may choose to sell a trademark if it no longer aligns with its branding strategy.
• Monetization of Assets – A trademark can be a valuable asset, and selling it can generate revenue for the owner.
• Legal or Financial Issues – Businesses facing legal or financial troubles may sell their trademarks to raise funds.

Steps to Transfer or Sell a Trademark in India

The process of Trademark Registration in India allows for the assignment of registered trademarks through a legal procedure. Here’s how you can transfer or sell a trademark:

1. Conduct a Trademark Search

Before transferring a trademark, it is essential to conduct a Trademark Search to verify its status. If the trademark is under dispute, pending approval, or expired due to non-renewal, it cannot be legally transferred. You can Search Brand Name details through the official Intellectual Property India website.

2. Draft a Trademark Assignment Agreement

A Trademark Assignment Agreement is a legal document that outlines the terms and conditions of the transfer. This agreement should include:

• Details of the assignor (current owner) and assignee (new owner)
• Trademark details (registration number, class, and description)
• Type of assignment (complete or partial)
• Financial considerations (if any)
• Rights and obligations of both parties
• Effective date of transfer

3. File Form TM-P with the Trademark Registry

To officially transfer a trademark, the assignee must file Form TM-P with the Trademark Registry. This form is used to request a change in ownership. Along with the form, the following documents must be submitted:

• Trademark Assignment Agreement
• Proof of identity and address of both parties
• Power of Attorney (if required)
• Government fees for processing

4. Examination and Approval by the Trademark Registry

Once the application is submitted, the Trademark Registry will examine the request. If all documents are in order, the transfer is approved, and the new owner is updated in the trademark records. The process may take a few months.

5. Public Notification and Opposition Period

The Trademark Registry may publish the assignment in the official journal. If there are no objections from third parties, the transfer is finalized. In case of objections, both parties may need to provide further clarifications.

Key Points to Remember

• A trademark can only be transferred if it is valid and not expired.
• If the trademark is due for renewal, the Renewal of Trademark In India must be completed before the transfer.
• The transfer must be recorded with the Trademark Registry to be legally enforceable.
• The new owner must use the trademark in accordance with the agreed terms to avoid disputes.

Trademark Licensing vs. Assignment

While trademark assignment involves a permanent transfer, trademark licensing allows a third party to use the mark without transferring ownership. Licensing is beneficial when:

• The original owner wants to retain ownership while allowing others to use the trademark.
• The business wants to expand its brand presence without selling the trademark.
• The licensee agrees to pay royalties to the trademark owner.

Trademark Renewal and Its Importance

If a trademark is not renewed on time, it may lapse, making it ineligible for transfer. Entrepreneurs can complete Trademark Renewal Online by submitting a renewal application before the expiry date. This ensures that the trademark remains valid and can be legally transferred.

Conclusion

Transferring or selling a trademark is a structured legal process that requires careful documentation and approval from the Trademark Registry. Whether you are an entrepreneur looking to sell a trademark or a buyer interested in acquiring one, understanding the Trademark Registration Process and legal formalities is crucial.

Always conduct a Trademark Search before proceeding and ensure that all agreements and filings are correctly documented. If necessary, seek legal assistance to avoid complications in the transfer process.

1. Can I sell a trademark that is not registered?

No, only registered trademarks can be legally sold or assigned. If the trademark is pending approval, the new owner may need to wait until it is officially registered.

2. How long does it take to transfer a trademark in India?

The process typically takes a few months, depending on the completeness of the documentation and the examination process by the Trademark Registry.

3. What happens if I do not record the trademark transfer with the Trademark Registry?

If the transfer is not recorded, the new owner will not have legal ownership rights, and disputes may arise in the future. It is crucial to complete the official transfer process to ensure legal protection.