37. Power of registered proprietor to assign and give receipts.—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.
38. Assignability and transmissibility of registered trade marks.—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.
39. Assignability and transmissibility of unregistered trade marks.—An unregistered trade mark
may be assigned or transmitted with or without the goodwill of the business concerned.
40. Restriction on assignment or transmission where multiple exclusive rights would be
created.—(1) 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, 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,
25
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.
41. Restriction on assignment or transmission when exclusive rights would be created in
different parts of India.—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.
42. Conditions for assignment otherwise than in connection with the goodwill of a business.—
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.
26
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.
43. Assignability and transmissibility of certification trade marks.—A certification trade mark
shall not be assignable or transmissible otherwise than with the consent of the Registrar, for which
application shall be made in writing in the prescribed manner.
44. Assignability and transmissibility of associated trade marks.—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 mark.
1
[45. Registration of assignments and transmissions.—(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, 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 such assignment or transmission to be entered on
the register.
(2) The Registrar may require the applicant to furnish evidence or further evidence in proof of title
only where there is a reasonable doubt about the veracity of any statement or any document furnished.
(3) 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 and in all other cases the Registrar shall dispose of the application
within the prescribed period.
(4) Until an application under sub-section (1) has been filed, the assignment or transmission shall be
ineffective against a person acquiring a conflicting interest in or under the registered trade mark without
the knowledge of assignment or transmission.]