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Chapter 5 – Assignment and Transmission

BananaIP Counsels > The Trade Marks Act > Chapter 5 – Assignment and Transmission

Power of Registered Proprietor to Assign and Give Receipts

37. The person for the time being entered in the register as proprietor of a trade mark
shall, subject to the provisions of this Act and to any rights appearing from the register to be
vested in any other person, have power to assign the trade mark, and to give effectual receipts
for any consideration for such assignment.

Assignability and Transmissibility of Registered Trade Marks
38. Notwithstanding anything in any other law to the contrary, a registered trade mark
shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with
or without the goodwill of the business concerned and in respect either of all the goods or
services in respect of which the trade mark is registered or of some only of those goods or
services.

Assignability and Transmissibility of Unregistered Trade Marks

39. An unregistered trade mark may be assigned or transmitted with or without the
goodwill of the business concerned.
Restriction on Assignment or Transmission Where Multiple

Exclusive Rights Would Be Created

40.—(1) Notwithstanding anything in section 38 and 39, a trade mark shall not be
assignable or transmissible in a case in which as a result of the assignment or transmission
there would in the circumstances subsist, whether under this Act or any other law, exclusive
rights in more than one of the persons concerned to the use, in relation to—
(a) same goods or services;
(b) same description of goods or services;
(c) goods or services or description of goods or services which are associated with each
other,
of trade marks nearly resembling each other or of identical trade mark, if having regard to the
similarity of the goods and services and to the similarity of the trade marks, the use of the
trade marks in exercise of those rights would be likely to deceive or cause confusion:
Provided that an assignment or transmission shall not be deemed to be invalid under this
sub-section if the exclusive rights subsisting as a result thereof in the persons concerned
respectively are, having regard to limitations imposed thereon, such as not to be exercisable
by two or more of those persons in relation to goods to be sold, or otherwise traded in, within
India otherwise than for export therefrom, or in relation to goods to be exported to the same

market outside India or in relation to services for use at any place in India or any place outside
India in relation to services available for acceptance in India.
(2) The proprietor of a registered trade mark who proposes to assign it may submit to
the Registrar in the prescribed manner a statement of case setting out the circumstances and
the Registrar may issue to him a certificate stating whether, having regard to the similarity of
the goods or services and of the trade marks referred to in the case, the proposed assignment
would or would not be invalid under sub-section (1), and a certificate so issued shall, subject
to appeal and unless it is shown that the certificate was obtained by fraud or
misrepresentation, be conclusive as to the validity or invalidity under sub-section (1) of the
assignment in so far as such validity or invalidity depends upon the facts set out in the case,
but, as regards a certificate in favour of validity, only if application for the registration under
section 45 of the title of the person becoming entitled is made within six months from the date
on which the certificate is issued.

Restriction on Assignment or Transmission When Exclusive Rights Would Be Created in Different Parts of India

41. Notwithstanding anything in sections 38 and 39, a trade mark shall not be
assignable or transmissible in a case in which as a result of the assignment or transmission
there would in the circumstances subsist, whether under this Act or any other law—
(a) an exclusive right in one of the persons concerned, to the use of the trade mark
limited to use in relation to goods to be sold or otherwise traded in, in any place in India, or in
relation to services for use, or services available for acceptance in any place in India; and
(b) an exclusive right in another of these persons concerned, to the use of a trade mark
nearly resembling the first mentioned trade mark or of an identical trade mark in relation to—
(i) the same goods or services; or
(ii) the same description of goods or services; or
(iii) services which are associated with those goods or goods of that description or
goods which are associated with those services or services of that description, limited to use
in relation to goods to be sold or otherwise traded in, or services for use, or available for
acceptance, in any other place in India:
Provided that in any such case, on application in the prescribed manner by the
proprietor of a trade mark who proposes to assign it, or by a person who claims that a
registered trade mark has been transmitted to him or to a predecessor in title of his since the
commencement of this Act, the Registrar, if he is satisfied that in all the circumstances the use
of the trade mark in exercise of the said rights would not be contrary to the public interest
may approve the assignment or transmission, and an assignment or transmission so approved
shall not, unless it is shown that the approval was obtained by fraud or misrepresentation, be
deemed to be invalid under this section or section 40 if application for the registration under
section 45 of the title of the person becoming entitled is made within six months from the date
on which the approval is given or, in the case of a transmission, was made before that date.

Conditions for Assignment Otherwise than in Connectionwith the Goodwill of a Business

42. Where an assignment of a trade mark, whether registered or unregistered is made
otherwise than in connection with the goodwill of the business in which the mark has been or
is used, the assignment shall not take effect unless the assignee, not later than the expiration
of six months from the date on which the assignment is made or within such extended period,
if any, not exceeding three months in the aggregate, as the Registrar may allow, applies to the
Registrar for directions with respect to the advertisement of the assignment, and advertises it
in such form and manner and within such period as the Registrar may direct.
Explanation—For the purposes of this Section, an assignment of a trade mark of the
following description shall not be deemed to be an assignment made otherwise than in
connection with the goodwill of the business in which the mark is used, namely:—
(a) an assignment of a trade mark in respect only of some of the goods or services for
which the trade mark is registered accompanied by the transfer of the goodwill of the business
concerned in those goods or services only; or
(b) an assignment of a trade mark which is used in relation to goods exported from
India or in relation to services for use outside India if the assignment is accompanied by the
transfer of the goodwill of the export business only.

Assignability and Transmissibility of Certification Trade Marks

43. A certification trade mark shall not be assignable or transmissible otherwise than
with the consent of the Registrar, for which the application shall be made in writing in the
prescribed manner.

Assignability and Transmissibility or Associated Trade Marks

44. Associated trade marks shall be assignable and transmissible only as a whole and
not separately, but, subject to the provisions of this Act, they shall, for all other purposes, be
deemed to have been registered as separate trade marks.

Registration of Assignments and Transmissions

45.—(1) Where a person becomes entitled by assignment or transmission to a
registered trade mark, he shall apply in the prescribed manner to the Registrar to register his
title, and the Registrar shall, on receipt of the application and on proof of title to his
satisfaction, register him as the proprietor of the trade mark in respect of the goods or services
in respect of which the assignment or transmission has effect, and shall cause particulars of
the assignment or transmission to be entered on the register.
Provided that where the validity of an assignment or transmission is in dispute between
the parties, the Registrar may refuse to register the assignment or transmission until the rights
of the parties have been determined by a competent court.

(2) Except for the purpose of an application before the Registrar under sub-section (1)
or an appeal from an order thereon, or an application under section 57 or an appeal from an
order thereon, a document or instrument in respect of which no entry has been made in the
register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar
or the Appellate Board or any court in proof of title to the trade mark by assignment or
transmission unless the Registrar or the Appellate Board or the court, as the case may be,
otherwise directs.

 

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