deed of assignment meaning india

• Now Trending:
• UNDERSTANDING TENANCIES ...
• THE SENIOR PARTNER OF PR...
• Dr. Prince O. Williams-J...
• How To Pick The Right Ho...

DEED OF ASSIGNMENT: EVERYTHING YOU NEED TO KNOW.

A Deed of Assignment refers to a legal document in which an assignor states his willingness to assign the ownership of his property to the assignee. The Deed of Assignment is required to effect a transfer of property and to show the legal right to possess it. It is always a subject of debate whether Deed of Assignment is a contract; a Deed of Assignment is actually a contract where the owner (the “assignor”) transfers ownership over certain property to another person (the “assignee”) by way of assignment. As a result of the assignment, the assignee steps into the shoes of the assignor and assumes all the rights and obligations pertaining to the property.

In Nigeria, a Deed of Assignment is one of the legal documents that transfer authentic legal ownership in a property. There are several other documents like a deed of gifts, Assent, etc. However, this article focuses on the deed of assignment.

It is the written proof of ownership that stipulates the kind of rights or interests being transferred to the buyer which is a legal interest.

Read Also: DIFFERENCE BETWEEN TRANSFER OF PROPERTY THROUGH WILLS AND DEED OF GIFT

CONTENTS OF A DEED OF ASSIGNMENT

Content of a Deed of Assignment matters a lot to the transaction and special skill is needed for a hitch-free transaction. The contents of a deed of assignment can be divided into 3 namely; the introductory part, the second (usually the operative part), and the concluding part.

• THE INTRODUCTORY PART: This part enumerates the preliminary matters such as the commencement date, parties in the transaction, and recitals. The parties mentioned in the deed must be legal persons which can consist of natural persons and entities with corporate personality, the name, address, and status of the parties must be included. The proper descriptions of the parties are the assignor (seller) and assignee (buyer). The Recitals give the material facts constituting the background to the current transaction in chronological order.
• THE SECOND PART (USUALLY THE OPERATIVE PART): This is the part where the interest or title in the property is actually transferred from the assignor to the assignee. It is more like the engine room of the deed of assignment. The operative part usually starts with testatum and it provides for other important clauses such as the consideration (price) of the property, the accepted receipt by the assignor, the description of the property, and the terms and conditions of the transaction.
• The testimonium : this shows that all the parties are involved in the execution of the deed.
• Execution : this means signing. The capacity of the parties (either individual, corporate bodies, illiterates) is of great essence in the mode of execution.  It is important to note that the type of parties involved determines how they will sign. Example 2 directors or a director/secretary will sign if a company is involved. In the same way, if an association, couple, individual, illiterate, family land (omonile), firm, unregistered association, etc. is involved the format of signature would be different.
• Attestation : this refers to the witnessing of the execution of the deed by witnesses.

For a Deed of Assignment to be effective, it must include a column for the Governor of the state or a representative of the Government where the property is, to sign/consent to the transaction. By virtue of Sec. 22 of the Land Use Act, and Sec. 10 Land Instrument Registration Law, the Governor must consent to the transaction.

Do you have any further questions? feel free to call Ibejulekkilawyer on 08034869295 or send a mail to [email protected] and we shall respond accordingly.

Disclaimer: The above is for information purposes only and should not be construed as legal advice. Ibejulekkilawyer.com (blog) shall not be liable to any person(s) for any damage or liability arising whatsoever following the reliance of the information contained herein. Consult us or your legal practitioner for legal advice.

Only 22% of poorest Nigerian households have electricity access –World Bank

Related Posts

Share on Facebook

Share on Twitter

Share on LinkedIn

Share on Email

Tanny   --> 12 December 2016

Sale deed versus deed of assignment

While buying a resale property in a co-operative housing society, I have differing opinion on whether a "sale deed" is appropriate of a "deed of assignment" is appropriate. I consulted several people from legal profession and opinion seems to be divided with some saying Sale Deed is mandatory, some saying Deed of Assignment is ok and some even suggesting rather absurdly - "you tell us what you want and we will do that for you".

My question is - I am looking for specific guidance of whether I register my agreement with a Sale Deed or with a Deed of Assignment. Please can you guide.

 10 Replies

Ms.Usha Kapoor (CEO)     --> 13 December 2016

First draft  asale deed and thendraft  adeed of Assignment and register both of them.If you appreciate this answer please give me all my profile likes.

Kishor Mehta (CEO)     --> 13 December 2016

Kumar Doab (FIN)     --> 13 December 2016

Agreed with Mr. Kishore Mehta.

Rama chary Rachakonda (Secunderabad/Highcourt practice watsapp no.9989324294 )     --> 13 December 2016

In real property transactions, a  deed of assignment  is a legal document that transfers the interest of the owner of that interest to the person to whom it is assigned, the assignee. When ownership is transferred, the  deed of assignment  shows the new legal owner of the property.

An "absolute sale" deed is defined by having no conditions attached to the sale except the buyer's payment of the purchase price. When the seller signs and delivers the absolute sale deed, this is generally recognized by law as the moment of sale.

Tanny   --> 13 December 2016

Thank you for explaining the difference between a Sale Deed and a Deed of Assignment. However could you explain in my case which is the one I would go for?

rajeev sharma (Advocate Ex senior manager law )     --> 13 December 2016

please ask reseller what document the builder has executed in his favi\our .if it is sale deed then dont compromise get sale deed executed in your favour

even the seller has a deed of assignment from his previous purchase. In that case will a sale deed or a deed of assignment be appropriate?

Adv. K.S.A.Narasimha Rao ([email protected] )     --> 13 December 2016

Dear Tanny,

Basing on the rights possessed by your prospective seller, the nominclature of the document depends on.

If your Prospective Seller is having only right of possession in respect of the property, then he can only make a deed of Assignment. But if your Seller is having absolute powers to sell the flat, then you can use nominclature as "Sale Deed".

Kindly clarufy if the deed of assignment be cancelled by assignor.

Aseem Koradia   --> 15 December 2016

The name of document is immaterial. The content of the document will remain the same. interpretation will be from the content of the document.

Aseem Koradia

Leave a reply

Your are not logged in . Please login to post replies Click here to Login / Register   

Recent Topics

Related threads.

Popular Discussion

• Property boundary issue
• Joint owners of flat
• Limitation for appeal under 43 rule 1
• Non receipt of surrender value of flat f
• Dishonoured check with wrong surname
• Original public documents are lost
• I have got police man inquiring about
• Eow / mpid case
• Bigamy case
• How to put an objection for property sal

view more »

Browse by Category

• Business Law
• Constitutional Law
• Labour & Service Law
• Legal Documents
• Intellectual Property Rights
• Property Law
• Forum Portal
• Today's Topic
• Popular Threads
• Post New Topic
• Unreplied Threads
• Top Members
• Share Files
• LCI Online Learning

Member Strength 9,45,036 and growing..

Download LCI APP

Our Network Sites

• We are Hiring
• Terms of Service
• Privacy Policy

© 2024 LAWyersclubindia.com. Let us grow stronger by mutual exchange of knowledge.

Lawyersclubindia Search

Whatsapp groups, login at lawyersclubindia.

Alternatively, you can log in using:

Transfer of Property Legal Consultant

What is Deed of Assignment for Flat?

A Deed of Assignment for flat is a very important document in the process of transfer of flat property ownership. This document legally transfers ownership from the assignor to the assignee. But what exactly is an assignor and assignee, and what are the important points to include in a deed of assignment?

Important Points

Meaning of Assignor and Assignee

An assignor is a person who currently owns the flat property and is transferring its ownership to another person. The assignee is the person who is receiving the flat property ownership. The deed of assignment for flat is the document that legally transfers property ownership from the assignor to the assignee.

Meaning of Deed of Assignment for flat

The Deed of Assignment for flat is a legal instrument that formalizes the transfer of flat property ownership from the Assignor (owner)  to the Assignee (purchaser). The document acts as evidence of the transfer of flat property ownership and is used to protect the rights and interests of both parties.

Some Key Points in the Deed of Assignment

When creating a deed of assignment for flat, it is important to include several key points to ensure that the transfer of flat ownership is legally binding and properly documented. Here are some examples of important points to include:

Description of the flat/property

The deed of assignment for flat should include a detailed description of the property being transferred. This can include information such as the address, size, and any unique features of the property.

Flat/Property construction details

It is also important to include information about the construction of the flat property, such as the name of the constructor and details about the plan approval, commencement and completion certificates, etc.

Information of the Society

The deed of assignment for flat should include information about the society, like, the society name, and its registration number. 

Prior transaction history of the property

The deed of assignment for flat should include information about any prior transactions that happened on the flat property. This can include information about how the existing owner has received the ownership and all the references about previous transactions.

Consideration amount and payment details

The deed of assignment for flat should include information about the consideration amount (i.e. the amount of money being paid for the property), the mode of payment, and any details about the payment schedule.

Acknowledgment of payment

The Deed of Assignment for flat should also include a clause where the Assignor gives an acknowledgment that he/she has received the agreed consideration amount from the Assignee. This will help in avoiding any disputes in the future regarding the payment made for the property. It is essential to ensure that the consideration amount has been received in full and that the Assignor has no further claims to the property.

Assurances and indemnification by the assignor

One of the most critical aspects of a Deed of Assignment for flat is the assurances and indemnification provided by the Assignor to the Assignee. The Assignor must assure the Assignee that the property being transferred is free from any encumbrances or legal issues. The Assignor’s assurance declares that the property is not subject to any liens, leases, mortgages, or other agreements that may impact the transfer of the property. Moreover, the Assignor must confirm that the property is not the subject of any court litigation, and they hold the title of the property free and clear. This assurance guarantees that the property being transferred has a clean title, and there are no legal disputes attached to it.

Assurance of no payment dues

The Assignor must assure the Assignee that there are no outstanding dues or pending payments towards any electricity charges, piped gas connection charges, Society maintenance charges, property taxes, and other charges, all taxes and dues in the respect of the property as of the date of execution of the Deed of Assignment for flat. The Assignor should further declare that in case any dues or taxes remain unpaid till the date of execution of the Deed, he/she will pay the same without any objection or dispute.

Assignor’s promise to co-operate with assignee

The assignor should promise to co-operate with the assignee in the future if any documents need to be signed or if any other actions are required to transfer ownership of the flat property. For example – cooperation for enrolling the Assignee’s name as owners of the property in all Government records, society records, Property Tax & M.S.E.B., etc. as & when be required.

Governing law in case of any dispute

The deed of assignment for flat should specify the governing law that will be used in case of any disputes between the assignor and the assignee.

Execution in the presence of witnesses

Finally, the deed of assignment for flat should be signed (executed) by both the Assignor and the Assignee in the presence of witnesses. This ensures that the transfer of ownership is legally binding.

Registration and Stamp Duty

After the Deed of Assignment for flat has been signed by both the parties (assignor and assignee), it must be registered in the sub-registration office. In Maharashtra, the stamp duty for registration is calculated based on the consideration price or the government valuation of the property, whichever is higher. This is an important step to ensure that the transfer of ownership is legally recognized and that the rights and interests of both parties are protected. Proper registration of the Deed of Assignment will also prevent any future disputes or legal complications.

The deed of assignment for flat plays a vital role in transferring the ownership of a property. The document is a legally binding agreement that protects the interests of both the Assignor and the Assignee. It is important to include the above-mentioned important points. Additionally, registering the deed of assignment in the sub-registration office and paying the applicable stamp duty is mandatory.

Deed of Assignment: Everything You Need to Know

A deed of assignment refers to a legal document that records the transfer of ownership of a real estate property from one party to another. 3 min read updated on January 01, 2024

Updated October 8,2020:

A deed of assignment refers to a legal document that records the transfer of ownership of a real estate property from one party to another. It states that a specific piece of property will belong to the assignee and no longer belong to the assignor starting from a specified date. In order to be valid, a deed of assignment must contain certain types of information and meet a number of requirements.

What Is an Assignment?

An assignment is similar to an outright transfer, but it is slightly different. It takes place when one of two parties who have entered into a contract decides to transfer all of his or her rights and obligations to a third party and completely remove himself or herself from the contract.

Also called the assignee, the third party effectively replaces the former contracting party and consequently assumes all of his or her rights and obligations. Unless it is stated in the original contract, both parties to the initial contract are typically required to express approval of an assignment before it can occur. When you sell a piece of property, you are making an assignment of it to the buyer through the paperwork you sign at closing.

What Is a Deed of Assignment?

A deed of assignment refers to a legal document that facilitates the legal transfer of ownership of real estate property. It is an important document that must be securely stored at all times, especially in the case of real estate.

In general, this document can be described as a document that is drafted and signed to promise or guarantee the transfer of ownership of a real estate property on a specified date. In other words, it serves as the evidence of the transfer of ownership of the property, with the stipulation that there is a certain timeframe in which actual ownership will begin.

The deed of assignment is the main document between the seller and buyer that proves ownership in favor of the seller. The party who is transferring his or her rights to the property is known as the “assignor,” while the party who is receiving the rights is called the “assignee.”

A deed of assignment is required in many different situations, the most common of which is the transfer of ownership of a property. For example, a developer of a new house has to sign a deed of assignment with a buyer, stating that the house will belong to him or her on a certain date. Nevertheless, the buyer may want to sell the house to someone else in the future, which will also require the signing of a deed of assignment.

This document is necessary because it serves as a temporary title deed in the event that the actual title deed for the house has not been issued. For every piece of property that will be sold before the issuance of a title deed, a deed of assignment will be required.

Requirements for a Deed of Assignment

In order to be legally enforceable, an absolute sale deed must provide a clear description of the property being transferred, such as its address or other information that distinguishes it from other properties. In addition, it must clearly identify the buyer and seller and state the date when the transfer will become legally effective, the purchase price, and other relevant information.

In today's real estate transactions, contracting parties usually use an ancillary real estate sale contract in an attempt to cram all the required information into a deed. Nonetheless, the information found in the contract must be referenced by the deed.

Information to Include in a Deed of Assignment

• Names of parties to the agreement
• Addresses of the parties and how they are binding on the parties' successors, friends, and other people who represent them in any capacity
• History of the property being transferred, from the time it was first acquired to the time it is about to be sold
• Agreed price of the property
• Size and description of the property
• Promises or covenants the parties will undertake to execute the deed
• Signatures of the parties
• Section for the Governors Consent or Commissioner of Oaths to sign and verify the agreement

If you need help understanding, drafting, or signing a deed of assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

• Define a Deed
• Contract for Deed California
• Contract for Deed in Texas
• Assignment Law
• Deed Contract Agreement
• Assignment Of Contracts
• Legal Assignment
• Deed vs Agreement
• Assignment Legal Definition
• Contract for a Deed

Deed of Assignment (for Intellectual Property)

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

• Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
• Date : The date on which the deed is executed should be clearly mentioned.
• Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
• Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
• Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
• Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
• Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
• Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
• Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
• Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
• Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.  

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment. 

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y. 

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

This site uses cookies to store information on your computer.

Some cookies on this site are essential, and the site won't work as expected without them. These cookies are set when you submit a form, login or interact with the site by doing something that goes beyond clicking on simple links.

We also use some non-essential cookies to anonymously track visitors or enhance your experience of the site. If you're not happy with this, we won't set these cookies but some nice features of the site may be unavailable.

By using our site you accept the terms of our Privacy Policy .

• What are Trademarks?
• Types of Trademarks
• Marks Not Registrable
• Well Known Trademarks?
• Trademark Licensing in India
• Knock out Searches
• Clearance Searches
• INN Searches
• Types of Trademark Application
• Trademark Classification
• Filing of Trademark Application
• Examination of Trademark Application
• Show cause Hearing
• Advertisement of Trademark Application
• Filing Notice of Opposition
• Filing a Counter Statement
• Filing Evidence in Support of Application
• Filing Evidence in Support of Opposition
• Filing Reply Evidence in Support of Opposition
• Hearing in Opposition Proceedings
• Renewal with Surcharge
• Trademark Restoration in India
• Removal/Rectification of Trademark in India
• Name Change
• Address Change
• Assignment or Transmission of Rights
• Change of Counsel
• Enforcement of Trademarks in India
• Passing off action
• Infringement
• Anti-Counterfeiting actions
• Customs recordal / Border Control
• Madrid Protocol

Trademarks like any asset can be transferred from one owner to another. Such transfers can take place in the form of an assignment, or merger or amalgamation between two entities.

For instance: Assignment is where entity A assigns or transfers or transmits the rights over his/her trademarks to entity B.

In case entity A mergers with entity B, and there is transmission of trademarks rights from A to B, it would also constitute assignment.

Assignment of trademarks is a process in which the owner of the trademark transfers the ownership of the mark either with or without the goodwill of the business. An assignment can either be with goodwill or without goodwill:

Assignment with goodwill : This is an assignment where the owner transfers the rights and value of the trademark as associated with the product it sells.

For example, A, owner of “TH” trademark for manufacturing and selling of watches, can assign the trademark along with giving the assignee the right to use the said trademark for the same product.

1. Forms and Fees: An application to record assignment of a pending or a registered trademark can be made through the following respective Forms:

• Pending Trademark: (assignment with goodwill) Form TM-M (CORRECTION OF CLERICAL ERROR OR FOR AMENDMENT U/R 37) Official fee- INR 900 per mark
• Registered Trademark: (assignment with goodwill) Form TM-P (SUBSEQUENT PROPRIETOR BY WAY OF ASSIGNMENT OR TRANSFER OF MARK) Official fee- INR 9000 for each assigned mark

Assignment without goodwill : This is an assignment where the owner restricts the assignee to use trademark for the products he uses it for. That is, the goodwill attached to the owner’s brand with respect to the product already being sold under such brand, is not transferred to the buyer. This means that assignor & assignee both can use the same trademark but in dissimilar goods or services.

For example, if the owner of the trademark “TH” uses it for manufacturing and selling of watches and decides to assign it without goodwill, it means that the assignee can use the trademark “TH” for any other product other than watches.

Procedure for filing an application to record assignment without goodwill: In order to record assignment without goodwill of business, the Applicant needs to make an application under Form TM-P (DIRECTION OF REGISTRAR FOR ADVERTISEMENT OF ASSIGNMENT WITHOUT GOODWILL- official fee INR 2700) within 6 months from the date of the assignment (extendable by 3 months as per prescribed forms), requesting the Registrar to advertise the assignment, that is give notice to the public of the assignment without goodwill of business.

Post such advertisement, the application for recording the assignment can be filed with the above-mentioned Form TM-M/TM-P respectively.

Such a Form shall be accompanied with a copy of the Form TM-P (DIRECTION OF REGISTRAR FOR ADVERTISEMENT OF ASSIGNMENT WITHOUT GOODWILL) as well as a copy of the advertisement notice as issued by the Registrar.

2. Documentary Requirements: Assignment Deed: A duly stamped and notarized assignment deed, which shall mandatorily mention the effective date; the full name and address of the assignor (transferor) and assignee (the subsequent transferee), along with their signatures; the consideration paid by the assignee to the assignor for the assignment; statement pertaining to whether the assignment is with goodwill or without goodwill of business along with the details of trademarks to be assigned.

For Applicants outside India, the assignment deed must to be notarized in the country where it is executed, and the same can be stamped in India.

Affidavit of no-pending litigation: In order to process such assignment requests, the Indian Trade Marks Registry has now made it mandatory to submit an affidavit attesting that there is no pending litigation and that the ownership of the trademarks are not in dispute. Accordingly, along with the assignment deed, the assignee (transferee) ought to submit a duly stamped and notarized affidavit to mentioning the details of the assignment and the assigned trademark and attesting that the ownership of the said trademark is not in dispute.

Need assistance on assignment of trademark in India? Please email us to [email protected] .

Contact Us     About Us

Trademark Assignment Process in India: A Comprehensive Guide

Transferring ownership of trademarks is a common practice, and it can be done through various methods such as assignment, merger, or amalgamation between entities. In this article, we will focus on the assignment procedure for trademarks in India.

Assignment of Trademarks: Trademark assignment involves the transfer of ownership of a mark from one entity to another. This transfer can occur with or without the goodwill of the business. Let’s explore the two types of assignments:

1. Assignment with Goodwill: This type of assignment involves transferring not only the rights but also the value associated with the trademark as it relates to the products or services being offered. For example, if the owner of the “OFIN” trademark, Ofin Legal Private Limited , assigns the trademark to another entity, the assignee will have the right to use the trademark for the same product.

Forms and Fees: To record the assignment of a pending trademark (with goodwill), you need to submit Form TM-M (Correction of Clerical Error or for Amendment U/R 37) along with an official fee of INR 900 per mark.

For a registered trademark (with goodwill), the appropriate form is Form TM-P (Subsequent Proprietor by way of Assignment or Transfer of Mark), and the official fee is INR 9000 for each assigned mark.

2. Assignment without Goodwill: In this type of assignment, the assignor restricts the use of the trademark by the assignee to specific products or services. The goodwill associated with the owner’s brand for the existing product is not transferred to the buyer. Both the assignor and assignee can use the same trademark but for different goods or services.

Procedure for Filing an Application to Record Assignment without Goodwill: To record an assignment without goodwill, the applicant must submit an application under Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill). The official fee for this form is INR 2700. The deadline to submit the assignment is six months from the date of filing. It is also possible to request an extension of three months, as per prescribed forms. The purpose of this application is to request the Registrar to advertise the assignment to the public.

After the assignment has been advertised, the applicant can file the Form TM-M or TM-P (depending on the status of the trademark) along with a copy of Form TM-P (Direction of Registrar for Advertisement of Assignment without Goodwill) and the advertisement notice issued by the Registrar.

Documentary Requirements: To complete the assignment process, certain documents need to be submitted:

• Assignment Deed: A duly stamped and notarized assignment deed is required. The deed should include the effective date, full names and addresses of the assignor and assignee, their signatures, the consideration paid for the assignment, and details of the trademarks being assigned. For applicants outside India, the assignment deed must be notarized in the country of execution and stamped in India.
• Affidavit of No Pending Litigation: The Indian Trade Marks Registry now requires an affidavit confirming that there is no pending litigation and that the ownership of the trademarks is not in dispute. Along with the assignment deed, the assignee should submit a duly stamped and notarized affidavit containing the details of the assignment and the assigned trademark, affirming the ownership status.

If you need further assistance or have any questions regarding trademark assignment, you can reach out to us at [email protected] .

In conclusion, the process of trademark assignment in India involves submitting the appropriate forms, paying the required fees, and providing the necessary documents. It is crucial to comply with the regulations and follow the correct procedures to ensure a smooth and valid assignment of trademark rights.

Leave a comment Cancel reply

Save my name, email, and website in this browser for the next time I comment.

Get a Quote Today!

We have sent you the proposal. Our team will get back to you soon or you can contact us on +91 91365 09060

07 August 2014

Registration of license / assignment deed under the Patents Act - Mandatory or not?

A license agreement or an assignment deed is an agreement between a right holder and the licensee and/or assignee wherein the right holder permits the licensee and/or assignee to use rights owned by the right holder in exchange for a consideration, whether in the form of a one-time settlement or a periodic royalty.Generally an agreement may be in writing or oral but Section 68 the Patents Act, 1970 (the Act)  mandates that the license/assignment agreement shall not be valid unless the same is in writing embodying all the terms and conditions governing the rights and obligations of the parties and are duly executed. Further Section 69 of the Act embodies the procedure for registration of an assignment or license agreement. The questions that arise for discussion are - what is the importance of the registration of a document under Section 69 of the Act and what are the consequences that follow if such registration is not obtained. This issue was adjudicated by the Delhi High Court by order dated 16th April, 2014 in Sergi Transformer Explosion Prevention Technologies Pvt. Ltd . v. Kumar Pratap Anil & Ors. [I.A. No. 16042/2010 in CS (OS) No. 1610/2010].

Factual background

The Plaintiff, Sergi Transformer Technologies Pvt. Ltd. (Sergi Transformer) filed a suit seeking permanent injunction against the Defendants and Mr. Phillipe Magnier (proforma defendant-the patentee) from infringing the Indian Patent No. 189089 (the suit patent) in respect of a “Method and Device for Preventing / Protecting Electrical Transformer against Explosion and Fire”. Sergi Transformer claimed to be the exclusive licensee of the above-mentioned patent by virtue of a license agreement dated 1st August, 2006. Further, it was also averred in the plaint that Sergi Transformer had initiated the process of registration of the license agreement with the Patent Office in Kolkata on 15th March, 2010. During the pendency of said suit, the Defendants filed an application under Order VII Rule 11 read with Section 151 of the Civil Procedure Code, 1908 (CPC) to dismiss the above-mentioned suit on the ground that the suit was not maintainable as the license agreement forming the basis of the said suit was not registered with the Patent office. The primary ground raised by the Defendants was that the license agreement relied upon by the Plaintiff was not a valid legal document as it has not been duly executed and it was a back-dated document that had been created to file the said suit. More importantly it was argued that although the license agreement was signed on 1st August, 2006, with effect from 1st January, 2006; it was not until 15th March 2010, that Sergi Transformer took steps to register the license as required under the Act. Sergi Transformer argued that the non-registration of a license deed does not render it void and it had written to the Controller of Patents under Section 69 of the Act to have the same registered. It was further argued that there is no bar under the provisions of Sections 109 and 69 of the Act to bring the suit against infringement and that post-amendment of the Act there is no time stipulation for filing the application before the patent office for registration of the license deed.

Delhi High Court on the  application under Order 7 Rule 11 CPC

The Delhi High Court, relying on judgment of Supreme Court in Liverpool & London S.P. & I Assn Ltd . v. M.V. Sea Success [(2004) 9 SCC 512], observed that at the stage of considering an application under Order 7 Rule 11 of the CPC, the court has to only examine the plaint averments and the list of documents filed along with the suit. The Court thus held that other pleas advanced by parties including pleadings in the written statement have no relevancy in deciding such an application.

Delhi High Court on registration of licenses under the Act

On perusing Sections 68 and 69 of the Act prior to and after the amendment in 2005, the Court observed that the un-amended Section 68 states that, a license or assignment agreement shall have effect from the date of execution, only on registration and an application for such registration has to be filed with the Controller within six months from the date of execution of document. In contrast, post-amendment under Section 69(5) of the Act, the validity of the license or assignment agreement as evidence is to be considered only after the document is registered in the office of the Controller, unless the Controller or the Court direct otherwise with reasons recorded in writing. Further under Section 69 of the Act there is no time prescribed for filing such an application for registration. The Court emphasized on a conjoint reading of Sections 68, 69, 109 and 110 of the Act. Although there exists no bar to file a suit for infringement by the exclusive licensee even if the license agreement is not registered under the Act,  in light of the wordings “unless the Controller or the Court....directs otherwise” under Section 69(5) of the Act, the Court clarified that the only case where an un-registered license or assignment agreement shall be admitted in evidence of the title of any person to a patent is if the Controller or the Court specifically directs in this regard in writing. In the instant case, though the Plaintiff had filed the license agreement before the patent office for registration, the Controller had not passed any specific order. Hence, the Court held that unless the agreement is registered or the court passes any such order, the license agreement is not to be considered in evidence by the Court. With respect to the averments on the illegality of the license agreement of Sergi Transformer, the Court held that these issues would be considered by the Patent Office when it decides on Sergi Transformer's application to register the agreement. Although the Court declined to dismiss the suit on the basis of lack of registration of Sergi Transformer's license agreement, the Court directed the Patent Office to decide on the registration of Sergi Transformer's license agreement within 6 months from the date of the order. Further, the Court also directed that all pending applications and suit proceedings in relation to the instant subject matter stand adjourned till the Patent Office passes an order on the registration of Sergi Transformer's agreement.

In the light of the above judgment, it seems that the courts are hesitant to grant any relief whether interim or final, pending registration of the patent license or assignment agreement under the Act. Thus, while it is mandatory to register the license or assignment agreement with the Patent Office, given the huge backlog of applications pending in the patent office for registration of licenses, the practice of staying proceedings pending the determination of registration of the license agreement is a matter of concern for a patentee/licensee. [ The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi ]

Browse articles

The rules of the Bar Council of India prohibit law firms from advertising and soliciting work through communication in the public domain. This website is meant solely for the purpose of information and not for the purpose of advertising. Lakshmikumaran & Sridharan does not intend to solicit clients through this website. We do not take responsibility for decisions taken by the reader based solely on the information provided in the website. By clicking on ‘ENTER’, the visitor acknowledges that the information provided in the website (a) does not amount to advertising or solicitation and (b) is meant only for his/her understanding about our activities and who we are. By continuing to use this site you consent to the use of cookies on your device as described in our Cookie Policy

• Home (current)
• Intellectual Property Law
• Constitutional Developments
• Protests and Riots
• Recent Updates
• Criminal Law
• Finology Legal

what is Patent Assignment Deed and its Advantages

It’s an agreement between Assignor and Assignee which explains the rights and conditions related to patent assigned property which means intellectual property of Assignor who is holding monopoly power towards that property. Under Indian law, its mandatory to register Patent Assignment Deed under Section 68 of the Patents Act, 1970 which giving Assignee absolute rights from date of execution of deed.

Kind of assignment deed:

• Legal assignment – in this Assignee may enter his name as patent owner.  
• Equitable assignment – in this certain share is given to another person. Equitable Assignee can’t enter his name as owner but can register as having interest in the patent.  
• Mortgage – in this patent right is partially or wholly transferred to obtain money. On repayment of money, mortgagor becomes entitle to register his name as owner.

Illustration:

A is the Assignor who got grant of patent for his invented product from Government of India willing to assign that to B’s company for loyalty in terms of share of 30% from every year earnings. And further it mentions the rights and duty of Assignor and Assignee under the legal agreement. This helps parties get relief in case of breach of contractual obligations.

Who is Assignor and Assignee?

Assignor is the person who is willing to transfer the title of patent and Assignee is the person who is willing to receive the title, interest and such other rights of patent from the Assignor by giving the required consideration.

What is the advantage of Patent Assignment Deed?

• It helps parties to understand their rights and duties with respect to the said Patent.  
• Since all the provisions are written and mutually agreed upon by the parties it minimizes ambiguity. More so in case of any dispute arising between the parties it shall be resolved according to the dispute redressal clauses mentioned in the Deed.  
• Formation of assignment deed gives legality and enforceability to the transfer of any Intellectual Property.  
• An Assignment Deed is a prima facie evidence of contractual relationship between Assignor and Assignee.

What are general rights and duties of Assignor and Assignee under this deed?

• Assignor need an absolute title against the patented goods for transferring such rights to Assignee.  
• Deed need to comply with all the essentials of contract in order to execute legally. If it violates public policy or does not have a lawful consideration, then such contract is void ab initio.  
• Assignor can transfer his intellectual rights fully or conditionally to Assignee for the consideration. Consideration could be of monetary value forming a large sum or shared percentage from income or stocks exchange of the concerned parties.  
• Assignee will get the monopoly right as Assignor assigns the patented goods. Henceforth, the Assignee steps into the shoes of the Assignor and by the virtue of the deed acquires an absolute right to use and enjoy the patented goods.  
• Assignee has the right to get indemnified against any intervention/inconvenience caused while he is exercising his rights.  
• Assignee can sue for damages caused to him by Assignor’s action, it maybe mistakes or voluntary negligence/disturbance or fraudulent activity in the deed.  
• Assignee is obligated to pay the consideration mentioned if he fails to do so within a stipulated period of time. Assignor can bring a legal action for the recovery of consideration but cannot terminate the title already transferred.  
• Assignee shall pay renewal and such other charges after the assignment. Prior to the assignment the Assignor needs to ensure that the title is free from any encumbrances.

Can the Assignment Deed be Terminated/Amended?

• This amendment mostly happens in equitable assignment deed. The deed must be registered before the Controller of Patent and in case of infringement or mutual consciousness the parties may mutually agree to amend any provision of the deed.  
• Termination of the deed is unlikely as it’s irrevocable and permanent in nature. As assignment being transfer of title in a patent which is permanent. It may be terminated in case of mortgage assignment deed.

Akshay is a Language Enthusiast & an HNLU alumnus. He believes in simplicity & takes legal literacy very close to his heart.

Liked What You Just Read? Share this Post:

Wanna share your views on this comment here:.

Related to this

9 Best Practices on Contract Vetting

Website Development Agreement

Intricacies of the Employee Contract

Freelancing

What are the various types of Buyer Broker Agreement?

Under legal.

Enforcement Directorate (ED) - Power and Composition Explained

Loss of over ₹580 Crore: ED's case against CM Kejriwal in Delhi Liquor 'Scam'

Top 5 Legal Internships & Events for Law Student/Grad in April 2024

IPR Protections: Before and After Launching the Startup

Top Universities/Colleges for Law Course Admission After CUET(UG) 2024

Finology legal on facebook, finology legal on twitter.

Copyright © 2024 Finology Ventures Pvt. Ltd. | All Rights Reserved

Popular Tags

Popular authors.

Popular Posts

• Skip to primary navigation
• Skip to main content
• Skip to primary sidebar
• Skip to footer

Conventus Law

More results...

India – The Effects Of Assignment Deed On A Copyright.

June 9, 2020 by Conventus Law

9 June 2020  

Introduction

This article examines the case Super Cassettes Industries Ltd. Vs M/S Shreya Broadcasting Pvt. Ltd where the plaintiff is Super Cassettes Industries Ltd, commonly known as T-Series, an Indian company involved in the business of audio-visual products including songs, films, music videos, etc. The plaintiff had acquired copyright through assignments on products it had not originally produced. The defendants had allegedly broadcasted plaintiff’s copyright work without obtaining a valid license for the same; thus, giving rise to the present dispute. This case deals with two major issues in copyright law:

1. Whether a suit by an assignee mandates inclusion of the assignor or the original creator of the copyright work as a defendant, and  

2. Whether punitive damages should be granted in case of copyright violation?  

In the present case, one of the main issues framed by the court was whether owner of the copyright is a necessary party in the suit lodged by the plaintiff. The defendants argued that the present suit is not maintainable as the plaintiff has failed to bring the original creator of the copyright as a party to the suit. The plaintiff argued that they are the owners of the copyright as the deed of assignment was executed between the plaintiff and the former owner of the copyright which vested the assignee (plaintiff) with ownership rights over the copyright. Hence there is no need to bring the original creator as a defendant party to the suit. The court believed that the proceedings regarding infringement of copyright instituted by an exclusive licensee come under the purview of the said provision. The Court in its decision in the case of ESPN Star Sports v. Global Broadcast News Limited and Ors, created an absolute standard. It prescribed that in each civil suit for infringement of a copyright filed by an exclusive licensee, unless the court has directed otherwise, the owner of the disputed copyright has to be made a party as a defendant and where this provision is not complied with the suit shall not be maintainable. However, in the present case the plaintiff is the owner of the copyright and according to the assignment deed has all the ownership rights over the copyright, therefore there is no mandatory requirement to implead the former owner of the copyright as a defendant to the suit.  

Since the assignment deed of the plaintiff was original and it clearly vested the exclusive right to authorize any communication to the public at large of its copyright work, via broadcasting or telecommunication, etc., the defendants could not dispute the claim.  

Punitive damages are not  per se  meant to compensate the plaintiff for a specific loss, rather punitive damages are meant to punish and to deter similar wrongful or repugnant conduct, although the plaintiff is the one who ends up receiving punitive damages from the defendant. So punitive damages require intentional misconduct or gross negligence. In other words, it requires a defendant to act with recklessness, malice, or deceit. In the case of Microsoft Corporation Vs. Ms. K. Mayuri & Ors, the Court held that  “the practice of granting exemplary damages needs to be strengthened particularly in those cases where flagrant infringement is found. In a case where the plaintiff proves such actual loss, he would be entitled to the same. However, even without such proof, in case of flagrant infringement, the court has the complete discretion to make such award of damages as may seem appropriate to the circumstances, so that it acts as a deterrent.  

It was further held that the damage to the image/reputation of a company is immeasurable. Yet, it is essential to measure the damages caused. Such judicious use of power is not to be interrupted by any mandate that the onus of proof is upon the plaintiff to show some particular benefit which has accrued to the defendant or that the plaintiff must satisfy the court by leading evidence that he has suffered actual loss.  

Can punitive damages be awarded against a copyright violation?  

In the case of Time Incorporated v Lokesh Srivastava and Anr, the court granted punitive damages even after plaintiff’s failure to prove compensatory damages. Moreover, these damages were granted in an ex-parte decision by a single judge. As is clear from the judgment, the court looked at this case as an opportunity to punish infringers of intellectual property and hence arrived at the decision to grant punitive damages. In this case, the single judge was relying upon the case of  Mathias v. Accor Economy Lodging Inc  which is not even remotely related to the subject matter of intellectual property.  

The court evaluated its decisions in the case of  Hindustan Unilever Limited v. Reckitt Benckiser  wherein it was held that the reputation of a corporate is an asset holding a positive value to it. It is the very reason why companies invest money in advertisements to build a brand in the market which would be attractive and permanently seal its name in the public memory. Any damage to this image would be immeasurable. The Court relied upon several judgments wherein grant of punitive damages for violation of intellectual property rights had been granted. In Rookes v. Barnard, the House of Lords laid down categories of cases where punitive/exemplary damages can be allowed. The categories made in the said case were upheld in the later decision of Cassell & Co. Ltd. v Broome with a few clarifications. These categories and clarifications entailed that punitive damages should be granted after due assessment of the facts of the case and that the total figure to be awarded would not suffice for punitive damages caused to the plaintiff. The judges should necessarily follow a step by step reasoning for granting punitive damages to the plaintiff. The point of conflict still arises that ad hoc judge centric award for damages will be granted, without measuring the actual loss suffered by the plaintiff, if the test in Rooke’s case is not followed. Only if the plaintiff is able to prove that the damages are not limited to the punitive loss, the court shall grant punitive damages.  

In the present matter the plaintiff with evidence had proved that the copyrighted work was broadcasted for 500 minutes on defendant’s channel, this led to grant of compensatory damages for that loss, however the plaintiffs failed to justify the need of granting punitive damages.  

Conclusion  

There is no mechanism for calculating punitive damages to be rewarded to a plaintiff in intellectual property disputes. There are cases where punitive damages are granted in favor of the successful plaintiffs but without proper process for valuation of the same. This entails the infringer paying the punitive damages without any valuation provided by the court. There should be a legally defined method to assess punitive damages and these parameters should be uniform. As discussed above, there have been cases where the courts have rewarded punitive damages even after plaintiff’s inability to prove even general damages suffered out of alleged infringement. In intellectual property matters it is inevitable to speculate into loss that could have been made to the reputation of a plaintiff owing to infringement of intellectual property rights. There is still a desperate need for introducing a uniform and statutory method to evaluate exemplary damages that may be awarded in such cases. Rewarding punitive damages without proper assessment of the same to punish the infringer is antithetical to the aim of the damages remedy as the motive of civil remedies is not to punish the wrongdoer but to restore the plaintiff in its original position.

Article was 1st published in Axfait  

For further information, please contact: 

Simran Bhullar​ , LexOrbis

[email protected] 

Register for your monthly Asia legal updates from Conventus Law

Error: Contact form not found.

India – Cyril Amarchand Mangaldas Advises Adaniports And Special Economic Zone Limited (“APSEZ”), In Acquisition Of 95% Stake Of Gopalpur Ports Limited (“GPL”) From The Existing Shareholders.

India – AKP Banking & Finance Digest- March 26, 2024.

- anuroop omkar - ak & partners,.

Asia Pacific Competition Law Bulletin March 2024.

CONVENTUS LAW

CONVENTUS DOCS CONVENTUS PEOPLE

3/f, Chinachem Tower 34-37 Connaught Road Central, Central, Hong Kong

[email protected]

• Phone : to connect with us call at: +91-11-40123000
• Email : [email protected]
• Our facebook
• Our Twitter
• Our linkedin
• Our whatsapp
• Map Location

NON-REGISTRATION OF ASSIGNMENT DEED NOT FATAL TO TRADEMARK RIGHTS OF ASSIGNEE

Understanding a deed of assignment for intellectual property

A deed of transfer is used to change the ownership of intellectual property, a common occurrence in business. Explore how and when to use one.

Find out more about intellectual property basics

by   Brette Sember, J.D.

Brette is a former attorney and has been a writer and editor for more than 25 years. She is the author of more than 4...

Read more...

Updated on: November 24, 2023 · 3min read

Understanding intellectual property in business

How to transfer intellectual property rights in business, what to include in a deed of assignment, registering new ownership, restrictions on intellectual property transfers.

Most companies have intellectual property as part of their assets, including software, product design, or copyright to white papers. Buying or selling such property is done using a document called a deed of assignment.

A large part of what a business consists of may be tied to intellectual property . It's easy to see physical property a company owns, such as a building, office furniture, or inventory, but intellectual property can be more challenging to identify.

Most businesses have intellectual property, or works created by human minds or, in some cases, by computers. Some examples of intellectual property include architectural drawings, ad campaigns, company or product names, inventions, and source code.

Examples of when transfers of intellectual property might happen include when a company is buying another company, when you are setting up an LLC and want to transfer your intellectual property into the company, or when a business buys product rights from another company or individual.

A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid.

A deed of assignment must be in writing and should include:

• The names and addresses of the assignor and assignee
• A description of the program or product for which the rights are being transferred
• A statement that all intellectual property rights to the property are being transferred
• Signatures of the parties and the date of the agreement execution

The deed could also include the following sections, where applicable:

• Consideration, or payment, to be made to the original owner.
• Warranties, or promises that the intellectual property rights being assigned don't infringe on anyone else's intellectual property rights . For example, in a deed regarding the transfer of a copyright, this section could state that the copyrighted work is original and not owned by someone else.
• Indemnification, or promise by the seller to reimburse the assignee if there is some problem with title to the property.
• Future assignments. For example, the agreement could be ongoing, so that anything the assignor creates in the future for this product or program is also transferred to the buyer.

Although a deed of assignment transfers ownership in intellectual property , it does not change the registration of the ownership. The assignee is responsible for handling all registration requirements.

For example, if a patent is transferred via a deed of assignment, the new owner must record the change in ownership with the U.S. Patent and Trademark Office. Similarly, the transfer of a copyright is recorded with the U.S. Copyright Office.

Transfers of intellectual property must comply with U.S. laws. One obvious caveat is that you can't transfer property you don't own. Transfers must also comply with antitrust laws, which are set up to prevent one company from completely dominating an industry.

If intellectual property rights are being transferred overseas, the transfer must comply with Export Administration Regulations and the International Traffic in Arms Regulations , which are designed to protect national security and trade.

The deed of assignment can be a crucial part of a business deal or transaction. You can create a deed of assignment yourself, or you can work with an attorney .

You may also like

How to write a will: A comprehensive guide to will writing

Writing a will is one of the most important things you can do for yourself and for your loved ones, and it can be done in just minutes. Are you ready to get started?

February 9, 2024 · 11min read

What is a power of attorney (POA)? A comprehensive guide

Setting up a power of attorney to make your decisions when you can't is a smart thing to do because you never know when you'll need help from someone you trust.

February 8, 2024 · 15min read

• Cambridge Dictionary +Plus

Meaning of deed of assignment in English

Your browser doesn't support HTML5 audio

Examples of deed of assignment

Word of the Day

a group of four people who play musical instruments or sing as a group

Alike and analogous (Talking about similarities, Part 1)

Learn more with +Plus

• Recent and Recommended {{#preferredDictionaries}} {{name}} {{/preferredDictionaries}}
• Definitions Clear explanations of natural written and spoken English English Learner’s Dictionary Essential British English Essential American English
• Grammar and thesaurus Usage explanations of natural written and spoken English Grammar Thesaurus
• Pronunciation British and American pronunciations with audio English Pronunciation
• English–Chinese (Simplified) Chinese (Simplified)–English
• English–Chinese (Traditional) Chinese (Traditional)–English
• English–Dutch Dutch–English
• English–French French–English
• English–German German–English
• English–Indonesian Indonesian–English
• English–Italian Italian–English
• English–Japanese Japanese–English
• English–Norwegian Norwegian–English
• English–Polish Polish–English
• English–Portuguese Portuguese–English
• English–Spanish Spanish–English
• English–Swedish Swedish–English
• Dictionary +Plus Word Lists
• Business    Noun
• All translations

Add deed of assignment to one of your lists below, or create a new one.

{{message}}

Something went wrong.

There was a problem sending your report.

India: Allahabad High Court On Stamp Duty On Debt Assignment

Introduction

Assignment of debt is one of the most common forms of transactions in financial markets. It essentially entails transfer of a debt from a creditor (assignor) to a third-party (assignee).

One of the biggest challenges faced in debt assignment transactions in India is the significant stamp duty implication on the deed of assignment. Considering the volume of assignment transactions undertaken generally by banks and financial institutions or by asset reconstruction companies (" ARCs "), the stamp duty levied becomes a significant cost in such transactions.

The Constitution of India (" Constitution ") confers upon the Parliament and each State Legislature the power to levy taxes and other duties. The subjects on which the Parliament or a State Legislature or both can legislate are specified in the Seventh Schedule of the Constitution. The Seventh Schedule is divided into 3 (three) lists:

• Union List;
• State List; and
• Concurrent List.

The Parliament has the exclusive power to legislate on the subjects enumerated in the Union List. The State List enumerates the subjects on which each State Legislature can legislate and such laws operate within the territory of each State. The Parliament, as well as the State Legislatures, have the power to legislate over the subjects listed in the Concurrent List.

The entry pertaining to levy of stamp duty in the Union List is as follows: -

" 91. Rates of stamp duty in respect of bills of exchange, cheques, promissory notes, bills of lading, letters of credit, policies of insurance, transfer of shares, debentures, proxies and receipts."

The entry pertaining to levy of stamp duty in the State List is as follows: -

" 63. Rates of stamp duty in respect of documents other than those specified in the provisions of List I with regard to rates of stamp duty. "

The entry pertaining to levy of stamp duty in the Concurrent List is as follows: -

" 44. Stamp duties other than duties or fees collected by means of judicial stamps, but not including rates of stamp duty . " [emphasis supplied]

From the aforementioned entries, it is clear that the power to legislate on the rate of stamp duty chargeable on instruments of debt assignment (since it is not covered under Entry 91 of the Union List) is with the State Legislature. However, the power to determine whether stamp duty can be charged or not on a specific instrument is in the Concurrent List.

In this regard, it may be noted that pursuant to the Enforcement of Security Interest and Recovery of Debt Laws and Miscellaneous Provisions (Amendment) Act, 2016 (" Amendment Act "), the Securitisation and Reconstruction of Financial Assets and Enforcement of Security Interest Act, 2002 (" SARFAESI ") and the Indian Stamp Act were amended to provide for an exemption from stamp duty on a deed of assignment in favour of an ARC.

As mentioned above, the power to legislate on whether stamp duty is payable or not on an instrument is in the Concurrent List. Therefore, the Parliament has the power to legislate on the aforesaid subject.

Pursuant to the Amendment Act, section 5(1A) was inserted in SARFAESI which provides that any agreement or document for transfer or assignment of rights or interest in financial assets under section 5(1) of SARFAESI in favour of an ARC is not liable to payment of stamp duty.

In several States, notifications have been issued for remission and/ or reduction of stamp duties on debt assignment transactions. For instance, in Rajasthan, the stamp duty chargeable on any agreement or other document executed for transfer or assignment of rights or interests in financial assets of banks or financial institutions under section 5 of SARFAESI in favour of ARCs 1 has been remitted. Further, in Maharashtra, the stamp duty on instrument of securitization of loans or assignment of debt with underlying security has been reduced to 0.1% (zero point one percent) of the loan securitized or the debt assigned subject to a maximum of Rs. 1,00,000 (Rupees one lac) 2 .

Certain State Governments, such as those of Rajasthan and Tamil Nadu have reduced the stamp duty based on the nature of the financial asset being assigned. In Rajasthan, the stamp duty has been reduced for assignment of standard assets whilst in Tamil Nadu, the stamp duty has been reduced for assignment of non-performing assets and assignment in favour of ARCs.

This paper discusses a decision passed by the Allahabad High Court in the case of Kotak Mahindra Bank Limited v. State of UP & Ors. 3 (" Kotak case "), where it was held that an instrument of assignment is chargeable with stamp duty under Article 62(c) (Transfer) of Schedule 1B of the Indian Stamp Act, as applicable in Uttar Pradesh (" UP Stamp Act "), as opposed to Article 23 (Conveyance) of Schedule 1B of the UP Stamp Act.

The stamp duty payable in various States under Article 23 or the relevant provision for conveyance is on an ad valorem basis whereas the stamp payable under Article 62(c) or relevant provision for transfer of interest secured, inter alia , by bond or mortgage deed, is a nominal amount. For instance, in Uttar Pradesh, the stamp duty payable under Article 62(c) is Rs. 100 (Rupees one hundred).

Decision in the Kotak case

In the Kotak case, Kotak Mahindra Bank Limited (" Kotak ") had purchased and acquired certain loans from State Bank of India (" Assignor ") along with the underlying securities.

The question for consideration before the full bench of the Allahabad High Court was whether the deed executed by the applicant with the underlying securities would be chargeable with duty under Article 62(c) or Article 23 of Schedule 1B of the UP Stamp Act.

The court observed that in order to determine whether an instrument is sufficiently stamped, one must look at the instrument in its entirety to find out the true character and the dominant purpose of the instrument. In this case it was observed that the dominant purpose of the deed of assignment entered into between Kotak and the Assignor (" Instrument "), was to transfer/ assign the debts along with the underlying securities, thereby, entitling Kotak to demand, receive and recover the debts in its own name and right.

Article 11 of Schedule 1B of the UP Stamp Act provides that an instrument of assignment can be charged to stamp duty either as a conveyance, a transfer or a transfer of lease. The court observed that since the Instrument was not a transfer of lease, it would either be a conveyance or a transfer.

The court referred to the definition of conveyance in the UP Stamp Act, which reads as follows:

" Conveyance" . — "Conveyance" includes a conveyance on sale and every instrument by which property, whether movable or immovable, is transferred inter vivos and which is not otherwise specifically provided for [by Schedule I, Schedule IA or Schedule IB] [as the case may be];" [emphasis supplied]

The court held that the term conveyance denotes an instrument in writing by which some title or interest is transferred from one person to other and that the use of the words "on sale" and "is transferred" denote that the document itself should create or vest a complete title in the subject matter of the transfer, in the vendee. In this case since under the Instrument, the rights of the Assignor to recover the debts secured by the underlying securities had been transferred to Kotak, it was held that the requirement of conveyance or sale cannot be said to be satisfied.

The court further observed that debt is purely an intangible property which has to be claimed or enforced by action and not by taking physical possession thereof, in contrast to immovable and movable property. Where a transaction does not affect the transfer of any immovable or movable property, Article 23 of Schedule 1B cannot have any applicability.

The court's view was that since debt along with underlying securities is an interest secured by bonds and/ or mortgages, transfer of such debt would be chargeable under Article 62(c).

The court further clarified that under the Instrument, merely the right under the contract to recover the debts had been transferred. Since the borrower(s) had never transferred the title in the immovable property given in security to the Assignor, the Assignor could merely transfer its rights i.e. mortgagee's rights in the property to recover the debts. It was further observed that the Assignor never had any title to the underlying securities and that it merely had the right to enforce the security interest upon default of the borrower(s) in repayment. The right transferred to Kotak was primarily the right to recover the debts, in accordance with law, by proceeding against the underlying security furnished by the bonds/ mortgage deed(s).

Therefore, the court held that the Instrument was chargeable with stamp duty under Article 62(c) of Schedule 1B of the UP Stamp Act.

Whilst coming to the conclusion that assignment of debt would not constitute a conveyance, the court referred to the definition of conveyance to state that debt is an intangible property which has to be claimed or enforced by action and not by taking physical possession thereof, in contrast to immovable and movable property.

In this regard, it may be noted that there are various judicial precedents 4 , where it has been held that an interest (including mortgage interest) in immovable property is itself immovable property.

However, even assuming assignment of debt with underlying securities over immovable property amounts to a conveyance, it may be pertinent to refer to the definition of conveyance in the UP Stamp Act which specifically excludes a conveyance which is otherwise provided for by the Schedule to the UP Stamp Act.

Article 62(c) of the UP Stamp Act reads as follows:

" 62. Transfer (whether with or without consideration) –

(c) of any interest secured by a bond, mortgage- deed or policy of insurance-- "

In view of the above, transfer of any interest secured by a mortgage deed, which is covered under Article 62(c), would be excluded from the meaning of conveyance and would be chargeable to stamp duty under Article 62.

In this regard it may be pertinent to refer to the definitions of 'bond' and 'mortgage deed' under the UP Stamp Act, which is as follows:

" " Bond " includes-

• any instrument whereby a person obliges himself to pay money to another, on condition that the obligation shall be void if a specified act is performed, or is not performed, as the case may be;
• any instrument attested by a witness and not payable to order or bearer, whereby a person obliges himself to pay money to another; and
• any instrument so attested, whereby a person obliges himself to deliver grain or other agricultural produce to another "

" " Mortgage-deed ". — "mortgage-deed" includes every instrument whereby, for the purpose of securing money advanced, or to be advanced, by way of loan, or an existing or future debt, or the performance of an engagement, one person transfers, or creates, to, or in favour of another, a right over or in respect of specified property; "

In view of the above, where a debt secured by a bond or a mortgage deed is assigned under a deed of assignment, the stamp duty payable on such deed of assignment will be under Article 62(c) of the UP Stamp Act or corresponding provisions of the Stamp Act of other States.

However, in cases of unsecured loans or loans secured by an equitable mortgage (where there is no mortgage deed), the deed of assignment would attract ad valorem stamp duty chargeable on conveyance, since the same will not get covered under Article 62(c) or similar provisions in other states.

The market practice until now has been to stamp the deed of assignment of debt under the relevant article for Conveyance in the applicable Stamp Act. In fact, in States such as Maharashtra, the State Government has issued notifications for reduction of stamp duty on a deed of assignment under the article for Conveyance.

The judgment passed by the Allahabad High Court in the Kotak case may prove to be a welcome step in reducing the incidence of stamp duty on debt assignment transactions. However, it would need to be seen whether in other States a similar view is taken by stamp duty authorities.

1. Notification No. F4(3)FD/Tax/2017-110 dated March 8, 2017 issued by Finance Department (Tax Division) Government Of Rajasthan.

2. Notification No.Mudrank-2002/875/C.R.173-M-1 dated May 6, 2002 issued by Revenue & Forests Department, Government of Maharashtra.

3. Reference Against MISC. Acts. No. 1 of 2016, order dated February 9, 2018.

4. Bank of Upper India Ltd. (in liquidation) v. Fanny Skinner and Ors. , AIR 1929 All 161. See also Prahlad Dalsukhrai and Ors. v. Maganlal Muljibhai Tewar , AIR 1952 Bom 454 and Harihar Pandey v. Vindhayachal Rai and Ors. , AIR 1949 Pat 170.

Originally published February 13, 2018.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

  © Mondaq® Ltd 1994 - 2024. All Rights Reserved .

Login to Mondaq.com

Password Passwords are Case Sensitive

Forgot your password?

Why Register with Mondaq

Free, unlimited access to more than half a million articles (one-article limit removed) from the diverse perspectives of 5,000 leading law, accountancy and advisory firms

Articles tailored to your interests and optional alerts about important changes

Receive priority invitations to relevant webinars and events

You’ll only need to do it once, and readership information is just for authors and is never sold to third parties.

Your Organisation

We need this to enable us to match you with other users from the same organisation. It is also part of the information that we share to our content providers ("Contributors") who contribute Content for free for your use.

• Intellectual Property

Assignment Agreements and Indian IP laws

Assignment can be defined as transferring the title and rights associated with a particular property from one person to another. The individual who transfers the title is called the transferor/assignor, and the person who receives the title is called the transferee/assignee. The result of an assignment is the transfer of all interest present in a particular property to the transferee.

Assignment in the context of intellectual property is the transfer of all the intellectual property rights held by a registered user (or creator, only in cases of copyrightable works) to another party. Assignment agreements are usually in writing and are duly signed by the assignee and the assignor.

The Indian Contracts Act of 1872 provides the general essentials that make a contract valid. These apply to assignment agreements as well. These essentials include the competency of parties to enter into a contract, legal consideration, promise and acceptance, and a lawful object. In addition to those mandates, assignment agreements about Intellectual Property have several other requirements to be fulfilled. Those requirements vary according to the type of intellectual property , i.e., artistic work, trademark, invention, design, etc.

Assignment of Copyrights

The bundle of economic and moral rights is called copyright . Economic rights consist of the right to distribute, reproduce, transform, translate, perform, private copying, etc. These rights can either be wholly or partially assigned according to the parties will. Section 18 and 19 of the Copyrights Act, 1957 refers to the assignment. The work that is to be assigned has to be in existence. The authors of musical/literary work cannot assign their right to receive a royalty to any other party except their legal heirs. The Copyrights Act 1957 mandates the assignment to be made through a written and signed document.

These agreements should consist of the work and the rights assigned, the duration and territorial extent of assignment, the amount of royalty payable to the party or their legal heir, and revision/extension/termination on mutually agreed upon terms. In the absence of details present in the agreement, the default term of the contract will be five years, and the default territorial extent will be limited to India.

The assignment must be recorded in the register in case of registered work.

Assignment of Trademark

Assignment of the trademark could concern certain goods/services or fully, with/without goodwill or any combination thereof. Assignment of trademarks is specified in Section 37-43 of the Trademarks Act, 1999. The agreement has to be in written form and duly signed by the parties involved, and the agreement should specify whether the goodwill is to be transferred along with the trademark.

An application to register the change in ownership of the title of trademark has to be made through From TM-P along with a duly certified copy of the original document and the instrument or deed used for the transfer of rights.

Assignment of Geographical Indications

Geographical indications (GI) are different from trademarks; they belong to a particular association or group of people who produce certain goods in a specific geographical area with special characteristics or quality. The usage of such a mark indicates the presence of such quality or characteristic that is a specialty to that territory. As GIs are public property, they cannot be subject to assignment, transmission, licensing, pledging, mortgaging, or any such types of agreements as mentioned in Section 24 of the Geographical Indications of Goods Act, 1999. The GI could be subject to succession, but it is possible only when the production of such a product remains within the territory mentioned.

Assignment of Patent rights

Assignment of patents has to be done through a written instrument. Section 68-70 of the Patents Act 1970 covers the assignment of patents. This instrument should specify all the terms and conditions governing the rights transferred and obligations imposed. Assignment of patents can be informed of legal assignment, equitable assignment, or mortgages. This ownership transfer must be registered in the register through a Form 16 application made to the Controller, along with two copies of the deed agreement document duly certified.

Assignment of Designs

The assignment of designs is regulated by the Manual of Designs Practice and Procedure. Sec 30 of the Designs Act, 2000 provides the information related to the assignment of Designs and the procedure of doing the same. This agreement must be in writing and contain all details regarding the transferred rights and the obligation imposed. This assignment has to be duly signed by both parties involved. It has to be registered on the application filing through Form 10 within six months from the date of execution of the assignment/instrument. Further extension of 6 months is also available. It has to accompany copies of the original transfer deed/instrument or copies duly certified.

For more information, please get in touch with Intepat .

Most Viewed Posts

• Patent Filing Procedure and Process in India – An Exclusive Guide
• 5 Step Trademark Registration Process in India
• What is Trademark and Types of Trademarks
• Understand Trademark Application Status [The Definitive Guide]
• Trademark Certificate in India

Recent Posts

Get in touch, related posts.

In today’s digital age, the surge in content streaming has dramatically altered how we consume media by offering ease of…

INTRODUCTION The administration and assignment of intellectual property rights, encompassing patents, copyrights, trademarks, designs, geographical indications, and proprietary knowledge, are…

Registration at UKIPO The case in question, originating in 2019, presents a groundbreaking legal dilemma: Can an artificial intelligence (AI)…