Although Trademark rights can be renewed every 10 years, ownership does not necessarily remain with the same party indefinitely. In the course of business, Trademark rights may be transferred from one party to another, for example through the sale of a company or its assets, a gift, inheritance, or corporate restructuring.
However, a sale and purchase agreement alone is not sufficient. Trademark ownership requires specific documentation that not only confirms the transfer between the previous owner and the new owner, but also serves as evidence of the assignment that must be recorded with the Directorate General of Intellectual Property (DGIP).
So, what needs to be prepared to ensure that a change of ownership is officially recorded in Indonesia’s Trademark database, and what is the procedure? Read on for a complete guide.
What Is a Trademark Assignment?
A Trademark assignment is the transfer of ownership rights in a Trademark from its previous owner to another party. This should be distinguished from a Trademark license.
Under a license, ownership of the Trademark generally remains with the Trademark owner, while another party is granted the right to use the Trademark pursuant to a licensing agreement.
In an assignment, however, ownership of the Trademark itself is transferred to the assignee. Therefore, when a company acquires a Trademark from another party, recording the change of ownership is an important step to ensure that the administrative records and Trademark ownership data accurately reflect the actual ownership.
Documents Required for a Trademark Assignment
To apply for the recordal of a Trademark assignment, you will need to prepare the following documents:
- Deed of Assignment
This document serves as the legal basis evidencing the transfer of rights from the previous owner to the new owner. It typically contains the identity of the party transferring the rights (the previous owner/Assignor) and the party receiving the rights (the new owner/Assignee); details of the Trademark being assigned, including its application/registration number, class, and representation of the mark; a statement confirming the assignment of rights; the basis or type of assignment, such as a sale and purchase, gift, merger, or other transaction; the effective date of the assignment; the scope of the assignment, for example where the assignment applies only to certain classes of the same Trademark; and, finally, the signatures of the parties.
- Application Form for Recordal of Assignment
This form must follow the format prescribed by the DGIP. It includes, among other things, the identity of the Applicant/Representative, details of the Trademark and its registration or application number, as well as information on the party assigning the rights and the party receiving them.
- Copy of the Applicant’s Identification Document
If the applicant is an individual, an identification document such as an ID card is required.
- Copy of the Deed of Incorporation/Legal Entity Document (if the owner/assignee is a legal entity)
- Copy of the ID Card/Passport of Each Party
- Copy of the Trademark Certificate
- Power of Attorney to the Intellectual Property Consultant
- Payment of the Official Fee for the Recordal of Trademark Assignment
Once these documents have been prepared, the IP Consultant will handle the application for recordal of the assignment through the DGIP Trademark system.
Can a Pending Trademark Application Also Be Assigned?
Yes. A Trademark that is still pending and has not yet obtained a registration certificate can also be assigned. The recordal application can be filed by providing the relevant “Application Number” and evidence of the Trademark application.
This is particularly important for companies undergoing acquisitions, corporate group restructuring, or intellectual property portfolio transfers involving multiple Trademarks with different registration statuses.
Why Does a Trademark Assignment Need to Be Recorded?
One potentially costly mistake is assuming that once a sale and purchase agreement or assignment document has been signed, the transfer of Trademark ownership is automatically complete from an administrative perspective. Companies must also ensure that the change of ownership is properly recorded with the DGIP.
This is particularly important when Trademarks form part of business transactions such as corporate acquisitions, asset transfers, corporate group restructurings, investments, and other commercial transactions.
For example, when a company acquires a business together with all of its intellectual property assets, it must ensure that every Trademark included in the transaction has been properly identified and that the recordal of each assignment is correctly handled.
Do not let history repeat itself, as in the case of Rolls-Royce, where VW failed to acquire ownership of the Rolls-Royce Trademark despite acquiring the company.
Make Sure the Trademark Portfolio Is Reviewed as Part of a Business Transaction
A Trademark assignment may appear straightforward, but in practice it can involve reviewing numerous registration numbers, application statuses, owner identities, assignment documents, and the consistency of information between transaction documents and the DGIP database.
This becomes even more important when a transaction involves dozens or even hundreds of Trademarks, making a comprehensive portfolio review prior to recording the assignments essential.
As an Intellectual Property Consultant, AFFA can assist Trademark owners, companies, investors, and assignees in reviewing Trademark portfolios, preparing the necessary documents, and filing applications for the recordal of Trademark assignments with the DGIP, under a highly transparent fee structure.
With proper recordal, a change in Trademark ownership is not merely documented in the underlying transaction documents—it is also properly reflected in Indonesia’s intellectual property administration system.
Should you need further information regarding the recordal of Trademark assignments in Indonesia and other jurisdictions, contact us directly through the channels below and receive a FREE 15-minute consultation:
📩 E-Mail : [email protected]
📳 Book a Call : +62 21 83793812
💬 WhatsApp : +62 812 87000 889
About AFFA:
Established in 1999, AFFA Intellectual Property Rights is an Indonesia-based boutique IP law firm serving international brands and innovators, offering full-service support—from prosecution and licensing to enforcement and commercialization—in Indonesia’s dynamic IP landscape. Our firm is widely recognized for its excellence, with accolades including “Best Boutique Law Firm in Indonesia” and “IP Enforcement Firm” at the Indonesia Law Firm Awards 2025 by Asia Business Law Journal, as well as being listed as a “Recommended Firm 2024 — Indonesia” by WTR 1000: The World’s Leading Trademark Professionals.
