CHAPTER IV – ASSIGNMENT AND TRANSMISSION

71.)Application for entry of assignment or transmission.


An application to register the title of a person who becomes entitled by assignment or transmission to a registered trade mark shall be made on form TM – 24 or TM – 23, according as it is made by such person alone or conjointly with the registered proprietor.

72.)Particulars to be stated in application.

An application under rule 71 shall contain full particulars of the instrument, if any, under which the applicant or, in the case of a joint application, the person other than the registered proprietor claims to be entitled to the trade mark; and such instrument or a duly certified copy thereof shall be produced at the Trade Marks Registry for inspection at the time of application. The Registered may require and retain an attested copy of any instrument produced for inspection in proof of title, but such copy shall not be open to public Inspection.

73.)Case accompanying application.

Where a person applying under rule 71 for registration of his title, does not establish his claim under any documents or instrument which is capable in itself of furnishing proof of his title, he shall, unless the Registrar otherwise directs, either upon or with the application, state a case setting forth the full particulars of the facts upon which his claim to be proprietor of the trade mark is based, and showing that the trade mark has been assigned or transmitted to him. If the Registrar so requires, the case shall be verified by an affidavit on form TM – 18.


74.)Proof of title.

The Registrar may call upon any person who applies to be registered as proprietor of a registered trade mark to furnish such proof or additional proof of title as he may require for his satisfaction.

75.)Impounding of Instrument.

If in the opinion of the Registrar any instrument produced in proof of title of a person is not properly or sufficiently stamped, the Registrar shall impound and deal with it in the manner provided by Chapter IV of the Indian Stamp Act, 1899.

76.)Assignments involving transmission of moneys outside India.

If there is in force any law regulating the transmission of moneys outside India, the Registrar shall not register the title of a person who becomes entitled to a trade mark by an assignment which involves such transmission except on production of the permission of the authority specified in such law for such transmission.

77.)Application for Registrar’s direction as to advertisement to an assignment of a trade mark without goodwill of the business.

1.)    An application for directions under section 41 shall be made on form TM – 20 and shall state the date on which the assignment was made. The application shall give particulars of the registration in the case of a registered trade mark, and in the case of an unregistered mark shall show the mark and give particulars including user of the registered as well as of the unregistered trade mark that has been assigned therewith in accordance with sub-section (2) of section 38. The Registrar may call for any evidence or further information and if he is satisfied with regard to the various matters he shall issue directions in writing with respect to the advertisement of the assignment.
2.)    The Registrar may refuse to consider such an application in a case to which section 40 applies, unless his approval has been obtained under the said section and a reference identifying the Registrar’s notification of approval is included in the application.
3.)    A request for an extension of the period within which the application mentioned in sub-rule (1) may be made shall be on form TM – 21.

78.)Application for entry of assignment without goodwill.

An application under rule 71 relating to an assignment of a trade mark in respect of any goods shall state –
(a)    Whether the trade mark had been or was used in the business in any of those goods; and
(b)    Whether the assignment was made otherwise than in connection with the goodwill of that business,

    and if both those circumstances subsisted, then the applicant shall leave at the Trade Marks Registry a copy of the directions to advertise the assignment, obtained upon application under rule 77, and such proof, including copies of advertisements or otherwise, as the Registrar is not satisfied that the directions have been fulfilled, he shall not proceed with the application.

79.)Separate registrations.

Where pursuant to an application under rule 71, and as the result of a division and separation of the goods of a registration or a division and separation of places or markets, different persons become registered separately under the same registration number as subsequent proprietors of a trade mark, each of the resulting separate registration in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.

80.)Registrar’s certificate or approval as to certain assignment and transmissions.

Any person who desires to obtain the Registrar’s certificate under sub-section (2) of section 39 or his notification of approval under section 40 shall send to the Registrar with his application on form TM – 17 or form TM – 19, as the case may be, a statement of case in duplicate setting out the circumstances and a copy of any instrument or proposed instrument effecting the assignment or transmission. The Registrar may call for any evidence or further information that he may consider necessary and the statement of case shall be amended if required to include all the relevant circumstances and shall, if required, is verified by an affidavit. The Registrar after hearing (if so required) the applicant and any other person whom the Registrar may consider to be interested in the transfer, shall consider the matter and issue a certificate thereon or a notification in writing of approval or disapproval thereof, as the case may be, to the applicant and shall also inform such other person accordingly. Where a statement of case is amended, three copies thereof in its final form shall be left at the Trade Marks Registry. The Registrar shall seal a copy of the statement of case in its final form to the certificate or notification.

81.)Registration of assignment to company under section 45.


For the purposes of sub-section (3) of section 45, the period within which a company may be registered as the subsequent proprietor of a registered trade mark upon application made under rule 71 shall be six months form the date of advertisement in the Journal of the registration of the trade mark or such further period not exceeding six months as the Registrar may allow on application being made on From TM – 25 by the applicant for registration of title or the registered proprietor, as the case may be, at any time before or during the period for which the extension can be allowed.