CHAPTER V

ASSIGNMENT AND TRANSMISSION

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 registerto 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 : Not with standing, anything in any other law to the contrary, a registered trade mark 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 : AssAn 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, 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 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 subsection (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 where multiple 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 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.

Explanation.- For the purposes of this section, an assignment of a trade mark of the following description shall not he 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 associted trade marks :associated trade mark 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.

45. Registration of assignments and transmission : (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.