Legal Provisions Relating to Assignment and Transfer of Trademark in India

 🔹 1. Meaning of Assignment and Transfer of Trademark

• Assignment of a trademark refers to the process where the ownership rights of a trademark are transferred from one party (assignor) to another (assignee).

• Transmission refers to a transfer by operation of law (e.g., on death of the proprietor, through inheritance or company amalgamation).

🔹 2. Legal Basis: Trade Marks Act, 1999

• The provisions related to assignment and transmission are covered under Sections 37 to 45 of the Trade Marks Act, 1999.

🔹 3. Section 37 – Power of Registered Proprietor to Assign

• A registered proprietor of a trademark has the legal right to assign the trademark with or without the goodwill of the business.

• This assignment must comply with the provisions of the Act.

🔹 4. Section 38 – Assignability and Transmissibility of Registered Trademark

• Registered trademarks are assignable and transmissible.

• A trademark can be assigned with or without the goodwill of the business.

🔹 5. Section 39 – Assignability of Unregistered Trademark

• Even an unregistered trademark can be assigned or transmitted, but not in a way that creates multiple exclusive rights in different persons in respect of the same or similar goods/services, which may cause confusion.

🔹 6. Section 40 – Restriction on Assignment Creating Exclusive Rights

• No assignment is valid if it creates multiple exclusive rights for different parties over similar goods/services in different parts of India unless permitted by the Registrar.

🔹 7. Section 41 – Restriction on Assignment in Case of Associated Trademarks

• Assignment of associated trademarks must be made together and not separately, to avoid consumer confusion.

🔹 8. Section 42 – Assignment Without Goodwill

• If the trademark is assigned without goodwill, it must be advertised as per the rules, and assignment is not complete until Registrar’s direction is complied with.

🔹 9. Section 43 – Application for Direction

• The assignee must apply to the Registrar within six months of the assignment, seeking direction for advertisement if the trademark is assigned without goodwill.

🔹 10. Section 44 – Registered Users Not Affected

• Assignment does not affect the rights of registered users unless they are informed and modifications are made.

🔹 11. Section 45 – Registration of Assignment

• Every assignment must be registered with the Trademark Registry by filing Form TM-P.

• It becomes effective only after entry in the Register.

🔹 12. Documents Required for Assignment

• Assignment deed

• NOC from the assignor

• Trademark certificate (if registered)

• Affidavit (if required)

• Proof of use and goodwill (in case of assignment with goodwill)

🔹 13. Modes of Assignment

• Complete assignment of all rights

• Partial assignment (for specific goods/services)

• Assignment with goodwill

• Assignment without goodwill

🔹 14. Procedure for Assignment Registration

1. Draft an Assignment Deed.

2. File Form TM-P within 6 months.

3. Attach supporting documents and pay fees.

4. Registrar may call for a hearing.

5. After satisfaction, the Registrar enters the change in the Trademark Register.

🔹 15. Importance of Assignment

• Legal protection of new owner

• Ensures clarity and ownership proof

• Enhances brand valuation

• Avoids future disputes

🔹 16. Judicial Support

Indian courts have upheld the right to assign trademarks through contract. E.g.:

“Assignment of trademark is a valid commercial transaction provided it does not cause confusion or deception.” – Delhi High Court

🔹 17. Conclusion

Assignment and transfer of trademarks in India are well regulated, providing adequate protection and legal clarity. Proper documentation, registration, and compliance with the Trade Marks Act, 1999 are essential to ensure that the assignee receives all legal rights and protections.