Selling a business, transferring a brand to a new entity or handing a trademark to an heir all require the formal assignment of the registered trademark and recording of changes with IPO-Pakistan. This is essential as without it, the new owner has no enforceable rights against a competing user until it has been done.
What Counts as an Assignment?
According to Section 69 of the Trade Marks Ordinance, 2001, a registered trademark is transmissible by assignment, testamentary disposition (a will) or operation of law, in the same manner 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 is in writing and signed by the assignor or their personal representative – it applies equally to assignments by way of security.
How to Register the Transaction with IPO-Pakistan
An 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
The importance of registering is that, until you’ve applied to register the transaction, it is 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 difference in the fee is a strong incentive to file promptly – waiting past six months costs more per mark.
FAQ
Can I transfer a trademark without selling the whole business?
Yes, as per Section 69, a trademark may be assigned independently of the business.
What happens if I don’t register the assignment with IPO-Pakistan?
The transaction will remain valid between you and the other party, but it will be ineffective against anyone who later acquires a conflicting interest in the mark without knowledge of your unregistered transaction – a real risk if there is 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 does not benefit from the statutory protections available to registered licensees.
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 soon you file after acquiring proprietorship.
Handling a trademark sale, transfer or licensing deal? Our trademark assignment and logo transfer service can manage the documentation and filing with IPO-Pakistan.
