Intellectual
Property Rights
Trade
Marks Act, 1999
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 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,
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.
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 or 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 marks.
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
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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