Selling a business, transferring a brand to a new entity, or handing a trademark to an heir – all of these require formally assigning the registered trademark and recording the change with IPO-Pakistan. Skip this step and the new owner has no enforceable rights against a competing user until it’s done.
What Counts as an Assignment?
Under Section 69 of the Trade Marks Ordinance, 2001, a registered trademark is transmissible by assignment, testamentary disposition (a will), or operation of law – the same way as any other personal or movable property. It can be transferred:
- Together with the goodwill of the business, or independently of it
- Partially – limited to some but not all of the goods/services it’s registered for, or limited to use in a particular manner or locality
Requirements for a Valid Assignment
An assignment (or an assent relating to a registered trademark) is only effective if it’s in writing, signed by the assignor or their personal representative. This requirement applies equally to an assignment by way of security, not just an outright transfer.
How to Register the Transaction with IPO-Pakistan
Assignment alone isn’t enough – Section 70 requires the transaction to actually be recorded on the Register. Either the person claiming the interest, or anyone else claiming to be affected by it, can apply to have the particulars entered. Registerable transactions include:
- An assignment of the trademark or any right in it
- The grant of a license under the trademark
- A security interest (fixed or floating) over the trademark
- An assent made by personal representatives
- A court or tribunal order transferring the trademark or a right in it
Why registering matters: until you’ve applied to register the transaction, it’s ineffective against anyone else who later acquires a conflicting interest in the mark without knowing about your unregistered transaction. A licensee under an unregistered transaction also loses statutory protections available to registered licensees.
Forms and Fees
- Form TM-23 – registering a subsequent proprietor after a single assignment/transmission: Rs. 6,000 if filed within six months of acquiring proprietorship, Rs. 7,500 if filed after six months
- Form TM-24 – registering a subsequent proprietor of multiple trademarks under the same devolution of title: Rs. 6,000 for the first mark plus Rs. 1,500 per additional mark (within six months); Rs. 7,500 plus Rs. 1,500 per additional mark (after six months)
The fee difference is a real incentive to file promptly – waiting past six months costs more per mark.
FAQ
Can I transfer a trademark without selling the whole business?
Yes – Section 69 explicitly allows a trademark to be assigned independently of the business’s goodwill.
What happens if I don’t register the assignment with IPO-Pakistan?
The transaction remains valid between you and the other party, but it’s ineffective against anyone who later acquires a conflicting interest in the mark without knowledge of your unregistered transaction – a real risk if there’s ever a dispute.
Does a trademark license need to be registered too?
Yes – the grant of a license is itself a registerable transaction under Section 70. An unregistered licensee doesn’t get the statutory protections that come with registration.
Does it cost more to register the transfer of several trademarks at once?
Registering multiple marks under one devolution of title (Form TM-24) costs less per additional mark than filing separately, but the base fee still depends on how quickly you file after acquiring proprietorship.
Handling a trademark sale, transfer, or licensing deal? Our trademark assignment and logo transfer service manages the documentation and filing with IPO-Pakistan.
