Trademark Assignment & Transfer in Pakistan

Trademark Assignment & Transfer In Pakistan

Transfer trademark ownership legally in Pakistan. Learn Form TM-23/TM-24 procedures, assignment with vs without goodwill, deed drafting, and tax liabilities.

By Syed Asad Hussain Zaidi · 8 September 2026

Author Note / Last Updated: Updated September 2026 by Syed Asad Hussain Zaidi | Advocate High Court | Senior Corporate, M&A & IP Transactions Counsel.

During corporate mergers, corporate restructurings, private equity acquisitions, or founder buyouts in Pakistan, intangible intellectual property assets frequently represent the single most valuable line item on the corporate balance sheet. Yet, corporate lawyers and business founders routinely execute multi-million rupee business transfer agreements under the mistaken impression that signing a commercial contract automatically transfers legal title to registered trademarks.

Under Pakistani statutory jurisprudence, a private contract does not transfer legal trademark title against third parties or the State until it is formally recorded on the Register of Trade Marks.

Governed by Chapter VII (Sections 67 to 74) of the Trade Marks Ordinance, 2001 (TMO 2001) and the Trade Marks Rules, 2004, the assignment and transmission of trademarks requires strict compliance with statutory deed drafting, provincial stamp duty verification, and official registry filings on Form TM-23 or Form TM-24.

Failing to register an assignment can have catastrophic legal consequences: under Pakistani law, an unrecorded assignee cannot initiate an infringement lawsuit, cannot record the mark with Pakistan Customs for border protection, and risks having the trademark cancelled for non-use.

This treatise provides corporate counsel, M&A practitioners, and enterprise executives with a comprehensive legal manual on structuring trademark assignments, navigating the doctrine of goodwill, and recording title with IPO-Pakistan.

1. Statutory Architecture of Trademark Assignments in Pakistan

Under Section 67 of the Trade Marks Ordinance, 2001, a registered trademark is transmissible by assignment, testamentary disposition, or by operation of law in the same manner as other personal or movable property.

| Statutory Provision | Legal Rule under Trade Marks Ordinance, 2001 | Operational Impact | | :--- | :--- | :--- | | Section 67(1) & (2) | Assignability of registered and unregistered marks with or without goodwill; may be assigned for all or partial goods/services. | Permits flexibility in corporate asset sales, spinoffs, and IP carve-outs. | | Section 74 | Mandatory recordation of assignment on the Register of Trade Marks. | Assignee must apply on prescribed form; unrecorded assignment deed is inadmissible in court as evidence of title without judicial leave. |

Key Principles of Pakistani Assignment Law:

  1. Partial Assignment (Section 67(1)): A trademark may be assigned in respect of either all the goods or services for which it is registered, or only some of those goods or services. (e.g., assigning a brand name for dairy products while retaining ownership for juices).
  2. Unregistered Marks (Section 67(2)): An unregistered trademark cannot be assigned in a vacuum; however, it can be validly assigned if it is transferred at the same time and to the same person as a registered trademark used in the same business.
  3. The Evidentiary Bar of Section 74(3): Except for the purposes of an application to the Registrar under Section 74, an unrecorded document or instrument in respect of which no entry has been made in the register shall not be admitted in evidence in any court in proof of the title to the trademark, unless the court otherwise directs. An unrecorded owner is legally powerless in court.

2. Assignment WITH Goodwill vs. Assignment WITHOUT Goodwill

The most critical legal and operational distinction in Pakistani trademark transactional practice is whether the mark is transferred with goodwill or without goodwill (an assignment in gross):

| Parameter | Assignment With Goodwill | Assignment Without Goodwill (In Gross) | | :--- | :--- | :--- | | Business Scope | Entire business reputation, customer goodwill, and commercial operations transfer with the mark. | Only the trademark sign/name is assigned; assignor continues separate manufacturing/trading operations. | | Public Confusion Risk | Minimal; uninterrupted commercial trade continuity. | High; risks misleading consumers regarding true manufacturer origin. | | Procedural Mandate | Standard application on Form TM-23 / TM-24 with assignment deed. | Mandatory Section 69 Rule: Assignee must apply to Registrar for directions and publish notices in national daily newspapers. |

The Section 69 Mandatory Advertisement Trap (Assignments Without Goodwill)

Under Section 69 of the Trade Marks Ordinance, 2001, when an assignment of a trademark is executed otherwise than in connection with the goodwill of the business in which the mark was used:

  1. The assignment shall not take effect unless the assignee, within six (6) months from the date of the assignment (or extended period permitted by the Registrar), applies to the Registrar for directions with respect to the advertisement of the assignment.
  2. The assignee must advertise the assignment in major English and Urdu national daily newspapers (e.g., Dawn, Jang) in the manner and within the timeframe directed by the Registrar.
CRITICAL TRANSACTION WARNING: If corporate M&A counsel structures an asset sale as an "assignment without goodwill" but fails to apply for Section 69 advertising directions within six months, the entire trademark assignment becomes legally invalid and unenforceable under Pakistani law!

3. Anatomy of a Bulletproof Deed of Trademark Assignment

A properly drafted Deed of Assignment under Pakistani law must incorporate specific structural clauses to survive registry audit and court scrutiny:

| Clause | Contractual Element | Drafting Significance | | :--- | :--- | :--- | | 1 | Recitals & Clear Title | Confirms assignor is sole registered proprietor free of liens, pledges, and third-party claims. | | 2 | Operative Present Assignment | Clear legal wording transferring absolute worldwide ownership rights to assignee. | | 3 | Lawful Consideration | Express recital of bona fide financial consideration paid to satisfy contract law requirements. | | 4 | Schedule of Marks | Comprehensive schedule listing trademark numbers, classes, word/logo marks, and jurisdictions. | | 5 | Warranties & Indemnities | Covenant that marks are subsisting and indemnity against pre-assignment infringement claims. | | 6 | Further Assurances | Undertaking to execute registry filings, Form TM-23/TM-24, and powers of attorney. |

Essential Contractual Clauses:

  1. Operative Words of Transfer: The assignor must "assign, transfer, convey, and set over unto the Assignee, all right, title, interest, and benefit" in the trademarks.
  2. Identification Schedule: An exhaustive annexure setting out every single application number, registration number, date of registration, Class, and graphical specimen.
  3. Goodwill Recital: Explicit affirmation of whether the assignment includes the goodwill of the business.
  4. Lawful Consideration: Under the Contract Act, 1872, valid financial consideration must be expressly recited. In intra-group corporate reorganizations, nominal consideration (e.g., "in consideration of the sum of PKR 10,000/- and other good and valuable commercial consideration") must be stated.
  5. Warranties of Title & Non-Infringement: The assignor must warrant that it is the sole beneficial owner, that the marks are in full force and effect, all renewal fees have been paid, and no adverse litigation, opposition, or revocation proceedings are pending.
  6. Further Assurances & Power of Attorney: A covenant requiring the assignor to execute all statutory forms, affidavits, and submissions required by IPO-Pakistan to perfect the assignee’s legal title.

4. Provincial Stamp Duty Compliance (The Stamp Act, 1899)

A critical procedural hurdle that frequently blindsides corporate practitioners is Provincial Stamp Duty.

Under Pakistani law, an instrument transferring property—including intangible intellectual property—is subject to ad-valorem or fixed stamp duty under the Stamp Act, 1899 as amended by the respective Provincial Assemblies:

[!IMPORTANT]
Admissibility of IP Assignment Deeds under Section 35 of the Stamp Act, 1899:
> "No instrument chargeable with duty shall be admitted in evidence for any purpose by any person having by law or consent of parties authority to receive evidence, or shall be acted upon, registered or authenticated by any such person or by any public officer, unless such instrument is duly stamped."
> Practical Consequence: An assignment deed executed on plain paper or insufficiently stamped cannot be acted upon by the Registrar of Trade Marks nor admitted in court during infringement suits until validated by payment of deficit stamp duty and statutory penalties.

If a Deed of Assignment executed in Lahore or Karachi is executed on plain paper or an insufficient stamp paper (e.g., Rs. 100/- when ad-valorem duty required Rs. 50,000/-), the Registrar of Trade Marks or High Court will impound the deed under Section 33 of the Stamp Act, levying penalties up to ten times the deficient duty before processing the transfer.

5. Step-by-Step Registration Procedure with IPO-Pakistan

To record the assignment on the official register, the parties must submit a formal application to the Trade Marks Registry:

| Step | Phase | Action Required | | :--- | :--- | :--- | | 1 | Deed Execution | Execute assignment deed on duly stamped non-judicial stamp paper with witness attestations. | | 2 | Form Preparation | Prepare Form TM-23 (joint application) or Form TM-24 (application by assignee alone). | | 3 | Registry Filing | Submit application with certified copy of deed, affidavit, and statutory fees at IPO-Pakistan. | | 4 | Title Audit | IPO scrutiny officer audits chain of title, validity of stamp duty, and statutory authority. | | 5 | Gazette Notification | Registrar publishes notice of change of proprietorship in the official Trade Marks Journal. | | 6 | Certificate of Recordal | Registrar updates Register of Trade Marks and issues formal Certificate of Assignment. |

Form TM-23 vs. Form TM-24: Which One to File?

Mandatory Submission Dossier:

  1. Form TM-23 or Form TM-24 executed and signed.
  2. Original Deed of Assignment duly stamped, witnessed, and notarized. (For foreign deeds, legalization or apostille is mandatory).
  3. Certified copies of the Registration Certificates.
  4. Form TM-48 (Power of Attorney) in favor of the High Court Advocate representing the assignee.
  5. Official government filing fees deposited via 1Link/1Bill or National Bank of Pakistan challan.

Registry Scrutiny & Gazetting

The Registry’s Examination Section scrutinizes the chain of title. If satisfied, the Registrar:

  1. Enters the assignee's name as the new "Registered Proprietor" on the Register of Trade Marks.
  2. Advertises the transfer in the official Trade Marks Journal.
  3. Issues an official Certificate of Registration of Assignment / Title Transfer Endorsement.

6. Taxation and Corporate Due Diligence in IP Transfers

A trademark assignment triggers significant tax liabilities and corporate compliance obligations that must be structured carefully:

| Compliance Area | Statutory Governing Rule | Tax / Corporate Obligation | | :--- | :--- | :--- | | Capital Gains Tax | Section 37 of Income Tax Ordinance 2001 | Trademarks are treated as capital assets; capital gains realized on transfer are taxable in assignor's return. | | Withholding Tax | Section 152 / 153 of Income Tax Ordinance 2001 | If buyer pays consideration to a foreign assignor, Section 152 withholding applies (subject to tax treaty relief). | | SECP Charge Satisfaction | Section 109 of Companies Act 2017 | If marks were pledged as bank security, Form 26 (Satisfaction of Charge) must be cleared with SECP. | | Cross-Border Forex | SBP Foreign Exchange Manual | Cross-border remittances for acquisition of foreign IP require State Bank of Pakistan banking approval. |

7. Strategic Due Diligence Checklist for M&A Buyers & Corporate Counsel

Before executing a trademark buyout or corporate asset transfer in Pakistan, execute this due diligence audit:

Conclusion: Perfecting Title to Corporate Brand Assets

A trademark assignment is a high-value corporate transaction requiring rigorous precision across contract drafting, provincial tax compliance, and quasi-judicial registry prosecution. Allowing an assignment to remain an unrecorded private contract strips the purchaser of statutory litigation power and leaves the asset vulnerable to forfeiture.

By structuring assignments with explicit goodwill terms, satisfying provincial stamp duty mandates, and promptly filing Form TM-23 with IPO-Pakistan, corporate buyers can guarantee ironclad, unassailable legal title to their intellectual property.

For strategic assistance in drafting trademark assignment deeds, conducting M&A IP due diligence, or recording title transfers with the Trade Marks Registry in Karachi, Lahore, or Islamabad, contact our Corporate & IP Transactions Practice Group at TaxCalc.pk / Zaidi & Associates.

Legal & Statutory Notice: The information provided in this publication is for general educational, academic, and statutory informational purposes only under the relevant laws of Pakistan (including the Income Tax Ordinance, 2001, the Companies Act, 2017, and the Trade Marks Ordinance, 2001). This content does not constitute formal legal, financial, or tax advice. For specific assessments, consult a licensed Advocate or qualified tax professional.