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CHAPTER - III

TRADE MARKS ACT OF INDIA

SPECIFIC GUIDELINES ON ASSIGNMENT AND TRANSMISSION OF

TRADE MARKS

III.1 EVOLUTION OF INDIAN TRADE MARKS ACT

This chapter deals with Evolution of Indian Trade marks Act from 1940

to 2009. Prior to 1940 there was no statutory law relating to trade marks in India.

The law applicable to the subject was based on common law of England before the

passing of the first Registration Act in 1875. 1

The Trade Marks Act 1940 introduced for the first time to address the

issues relating to the registration and statutory protection of trade marks in India.

This Act was in force until 1958, when Trade and Merchandise Marks Act was

passed. This Act was repealed and the present law is governed by the Trade Marks

Act 1999.

The Trade Marks Act 1999 has made substantial changes in the law. As

regards unregistered trade marks, some of the law are codified, while others are

based on common law for which one has to refer the decisions of courts.

The statutory rights conferred by registration of a trade mark are so wide

and complex. It has been found necessary to safeguard the bonafide interest of other

traders from litigation and harassment by owners of registered trade marks, apart

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from protecting the purchasing public from imposition and fraud by infringers of

genuine trade marks.

The Present Act of 1999, apart from simplifying the law, has introduced

many new provisions, which are in the interest of trade mark owners as well as the

consumers of goods.

For historical reasons both the common law and the statutory law of trade

marks in India have closely followed the pattern of English Law. The Trade Marks

Act, 1940, which was the first statute on the subject introduced in India, was almost

a replica of the U.K.Trade Marks Act 1938. This Act was subsequently replaced by

the Trade and Merchandise Marks Act 1958. Apart from making substantial

alterations in the previous law this Act takes into account some provisions relating

to trade marks contained in the Indian penal Code, the Criminal Procedure Code and

Sea Customs Act. This Act has again been repealed by the Trade Marks Act 1999.

III.2 THE OBJECT OF TRADE MARK LAW

The object of trade mark law is to deal with precise nature of the rights

which a person can acquire in respect of trade mark, the mode of acquisition of such

rights, the method of transfer of those rights to others, the precise nature of

infringement of such rights, the procedure for enforcement of those rights and the

remedies available in respect thereof. This branch of Commercial Law has

undergone change from time to time in tune with changing pattern of business

methods and practices. Even the very concept of a trade mark and its functions have

changed. Already in UK a new trade mark law had been enacted in 1994. In India,

the law now is governed by the Trade Marks Act 1999.

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The salient features of the Trade Marks Act 1999 are presented below

1. The Trade Marks Act, 1999 deals with entire law relating to trade
marks and its procedures2.

2. The provisions of this Act are in conformity with the obligations


imposed by the Agreement on TRIPs.

3. Provisions for filing a single application for registration of a mark


in more than one class. Class 1 to 34 related with goods and Class
35 to 45 related with services.

4. Section 9 of the Act specifically mentions absolute grounds for


refusal of registration.

5. Section 12 empowers the Registrar to permit registration by more


than one proprietor of trade marks in the case of concurrent use
even though marks are identical or similar.

6. Widening the definition of trade mark by recognizing the shape of


goods, packaging and combination of colours as marks and trade
marks.

7. Simplifying the procedure for registration of registered user and


enlarging the scope of permitted use.

8. Marks which are not registrable elaborated.

9. Abolition of the necessity for disclaimer.

10. The Act has abolished the system of maintaining registration of


trade marks in Part A and Part B with different legal rights and
provide only a single register with simplified procedure for
registration and with equal rights. Abolition of Part B register.

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11. Provisions for protection of well known trade marks and test for
determination of such marks.

12. Increasing the period of registration and renewal from 7 to 10


years.

13. Widening the scope of infringement of registered trade mark.

14. Assignment of unregistered trade mark without goodwill of


business is permitted.

15. Registered user provisions simplified. Registrar has been given the
power to decide.

16. Non-registered licensing of registered trade mark is permitted.

17. Licensing of unregistered trademark is permitted.

18. Creation of Appellate Board to hear and decide appeals from the
decisions of Registrar.

19. Publication of alphabetical Index of classification of goods and


services.

20. Transferring the final authority relating to registration of


certification trade marks to the Registrar instead of the Central
Government.

21. Enlarging the jurisdiction of courts to bring the law on par with the
Copy Right Laws, amplifying the powers of the court to grant
injunction in certain cases and other related amendments to
simplify and streamline the Trade Mark Law and procedure.

22. The Act provides registration of trade marks for services also in
addition to goods.

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23. Registration of names of chemical element or international non-
proprietary names are prohibited under Section 13. So also the
names and re-presentations of living persons or persons recently
dead cannot be used for registration unless the consent is obtained
from the concerned persons.

24. The Trade Marks Act, 1999, provides registration of collective


marks by associations, certification trade marks.

25. For speedy disposal of appeals and rectification of applications, the


Act establishes Intellectual Property Appellate Board.

26. The duration of a valid registration is for a period of 10 years from


the date of its registration. It may be renewed for any number of
periods (Section 25).

27. The Provisions of this Act do not affect rights of action against any
person for passing off goods or services (Section 27 (2)].

28. Section 28 confers to the registered proprietor of a trade mark, (i)


the exclusive right to the use of the trade mark and (ii) right to
obtain the relief against infringement of the trade mark.

29. The Trade Marks Act, 1999, provides reliefs in any suit for
infringement of trade marks or for passing-off under Section 135.
They are injunction and at the option of the plaintiff either damages
or an account of profits.

30. The Act provides enhanced punishment for the offences relating to
trade marks on par with the present Copyright Act, 1957, to prevent
the sale of spurious goods.

31. Section 5 of the Act establishes the Trade marks Registry. The Act
also empowers the Central Government to appoint the Registrar of
Trade marks (Section 3). He is in control and management of the

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Register of Trade marks. The registration of trade marks is under
the control of the Registrar.

32. Section 142 protects the persons against groundless threats of legal
proceedings.

33. The Act provides assignability and transmissibility of registered as

well as unregistered trade mark either with goodwill or without

goodwill.

The Trade Marks Act, 1999 has been enacted to amend and consolidate

the law relating to trade marks, to provide for registration and better protection of

trade marks for goods and services and for the prevention of the use of fraudulent

marks. The following are the important Provision and Rules of Assignment and

Transmission of Trade marks in India.

III.3 ASSIGNMENT AND TRANSMISSION OF TRADE MARKS IN

INDIA

Sections 37 to 45 make provisions concerning assignment and

transmission of trade made in Chapter V of Trade Mark Act 1999. As per law, it is

an intangible asset having value. Right of a trade mark is licensable, assignable and

transmissible as any other right in a property. It may pass to a successor on the death

or bankruptcy of the owner or amalgamation or merger of two enterprises.

The following is a brief summary of the provisions of this Chapter V of

Trade Mark Act 1999 dealing with assignment and transmission. 3

1. The right of registered proprietor to assign a trade mark and to give

effectual receipts for any consideration for such assignment is recognized.

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2. A registered trade mark is assignable or transmissible with or without

goodwill in respect of all goods/services or of some only of those goods/services for

which the mark is registered. It is to be noted that Article 21 of the TRIPS

Agreement mandates that the owner of a registered trade mark shall have the right

to assign the trade mark with or without the transfer of the business to which the

trade mark belongs.

3. A significant change introduced in the law is that it allows an

unregistered trade mark to be assigned or transmitted with or without the goodwill

of the business concerned. Under the former law there was an express prohibition to

the effect that unregistered trade mark is not assignable or transmissible except

along with the goodwill of the business concerned except in specified circumstances.

4. The law continues to retain the restrictions on assignments or

transmissions of trade mark, where multiple exclusive rights would be created in

more than one person which would be likely to deceive or cause confusion.

Nevertheless such assignment is deemed to be invalid if having regard to the

limitations imposed, the goods are to be sold in different markets-either within India

or for exports. The Registrar is empowered to issue certificate as to whether or not

the proposed assignment is valid. Unless obtained by fraud, the certificate as to

validity is to be conclusive.

5. Restriction on assignment or transmission so as to prevent splitting of

rights on a territorial basis and creating rights in different persons in different parts

of India, which existed in the old Act are continued to be retained in the present law.

Registrar empowered to approve assignment, where he is satisfied that it would not

be contrary to the public interest.

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6. Assignment without goodwill of business will not take effect unless

assignor obtains directions of the Registrar and advertises the assignment as per

directions and as prescribed. It is submitted that this old approach is not consistent

with the present day reforms in the law relating to trade mark.

7. Assignment of certification trade mark can only be done with the consent

of the Registrar. The only change introduced relating to this provision is the

substitution of the word Registrar for the word Central Government, consequent

on the change of law vesting final authority for disposal of applications for

certification trade mark on the Registrar.

8. Associated trade mark will continue to be assignable and transmissible

only as a whole, as under the previous law.

9. The Registration of assignment and transmission is governed by the same

old procedure. If the validity of the assignment is in dispute, the Registrar may

refuse to register, unless the rights of parties are determined by the competent court.

If there is in force any law regulating the transmission of money outside India, the

Registrar shall not register the title of a person who becomes entitled to a trade mark

by the assignment which involves such transmission, except on production of the

permission of the authority specified in such law for such transmission (Rule 73).

10. The particulars that will be entered are the name and address of the

assignee, the date of assignment, where the assignment is in respect of any right in

the mark, a description of the right assigned, the basis under which assignment is

made and the date on which the entry is made in the register.

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11. Rule 68 to 79 of the Trade marks Rules contain the procedural

guidelines.

III.4 Relevant Provisions of Assignment and Transmission

An assignment of a trade mark must be in writing by act of the parties

concerned [Sec. 2 (1) (b)]. No specific form has been prescribed for the purpose.

Transmission means transmission by operation of law, devolution on the personal

representative of a deceased and any order mode of transfer, not being assignment

[Sec. 2 (1) (zc)].

Under common law (previous law) title to a Trade mark could be

transferred only along with the goodwill of the business for the goods in respect of

which the mark was used. Under Sec. 39 of the Trade Marks Act 1999, a trade mark

can be assigned with or without the goodwill of the business concerned. This

recognizes the modern principle that a trade mark and the goodwill of the business

are separable entitles.

If an Unregistered Trade mark is assigned without goodwill of the

business, the assignee will not be able to protect the trade mark since in the absence

of the goodwill of business no action for passing off will lie. Unless the assignee

registers the trade mark that assignment does not result in any enforceable right to

the assignee.

The provisions relating to assignment and transmission of trade marks

are contained in SS 37 to 45.

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A registered trade mark can be assigned or transmitted with or without

the goodwill of the business concerned (SS 37 & 38). Salient features of the relevant

provisions of law are presented below4

1. Sec. 37 Power of registered proprietor to assign and give receipts.

A registered proprietor an assign only the rights conferred upon him by

registration. The power to assign is given to the person for the time being entered in

the register as proprietor of trade mark (Sec 37) and to give receipt for any

consideration for such assignment. If the mark was registered in the wrong name,

the registered proprietor has power to assign the mark and the validity of the

assignment cannot be questioned.

The trade mark and goodwill of business need not necessarily be

assigned simultaneously. If an assignment is not in proper form it can be cured by a

subsequent assignment. But the intention of transferring the trade mark along with

the goodwill of business must be mentioned.

2. Sec. 38 Assignability and Transmissibility of Registered

Trade Marks

A registered trade mark shall be assignable and transmissible with or

without the goodwill of the business concerned. The assignment need not

necessarily relate to the whole of the goods for which the mark is registered but may

be confirmed to part of the goods.

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3. Sec. 39 Assignability and Transmissibility of Registered Trade Mark

The trade mark Act 1999 permits the assignment or transmission of an

unregistered trade mark with or without the goodwill of the business concerned

(Sec. 39).

4. Sec. 40 Restrictions on Assignment or Transmission where Multiple

Exclusive Rights would be Created

In transactions likely to result in the creation or multiple exclusive rights,

question will arise whether the similarity of the trade marks assigned. The similarity

of the goods for which they are assigned are such that the use of the marks by more

than one person concerned would be likely to deceive or cause confusion, thereby

invalidating the assignment u/s 40.

In such cases the proprietor of the registered trade mark who proposes to

assign it may submit to the Registrar u/s. 40 a statement of case setting out the

circumstances and the Registrar may issue a certificate stating whether the proposed

assignment would or would not be invalid.

5. Sec. 41 Restrictions on Assignment or Transmission when exclusive

rights would be created in different parts of India

The assignment or transmission of a trade mark, registered or

unregistered, which would result in the creation of exclusive rights in different

persons in different parts of India is prohibited. Thus, splitting of a trade mark on a

territorial basis is not permitted. The Registrar, however approve the assignment or

transmission if he is satisfied that the use of the trade mark in exercise of the rights

resulting from such transaction would not be contrary to public interest.

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6. Sec. 42 Condition for assignment otherwise than in connection with

the goodwill of a business

The goodwill of the business referred to in Sec. 42 relates to the

particular goods in respect of which the mark is used. Goodwill connected with

export business is considered different from goodwill connected with local business.

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 service for which the trade mark is registered accompanied by
the transfer of the goodwill of the business concerned in those
goods or services only.

b) An assignment of a trade mark which is used in relation to goods

exported from India or in relation to service for use outside India,

the assignment is to be accompanied by the transfer of the goodwill

of the export business only.

Advertisement of Assignment without the goodwill of business

Assignment of a trade mark, whether registered or unregistered, without

the goodwill of business is subject to further condition in addition to those imposed

u/s. 39 to 41.

Assignment without goodwill of business will not take effect unless the

assignee advertises the assignment in accordance with the direction of the Registrar

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i.e. within 6 months from the date of assignment or extended period, if any, not

exceeding three months in the aggregate. The purpose of the advertisement is to give

notice of the assignment without goodwill of the business to the public. Application

for direction of advertisement should be made to the Registrar within the time

prescribed u/s. 42. The Registrar will give directions as to the form and manner of

advertisement and also the period within which the assignment should be advertised.

Advertisement of the mark would appear to be necessary only whether

the mark is used. In the case of unused trade mark, advertisement does not appear to

be necessary.

If for any reason, there is a failure on the part of the assignee to take

necessary action within six months or within the extended time allowed, the

assignment will become inoperative for registration of his title under section 45.

7. Sec. 43 Assignability and Transmissibility Certification Trade Marks

A certification trade mark should 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.

Certification trade marks are assignable or transmissible only with the

consent of the Registrar of Trade marks. After obtaining the necessary consent, the

procedure for entering the name of the subsequent proprietor on the register is the

same as for an ordinary trade mark.

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8. Sec. 44 Assignability and Transmissibility of Associated

Trade Marks

Associated trade marks are assignable or transmissible only as a whole

and not separately. The object of this provision is to prevent the likelihood of

deception or confusion arising from the use of similar trade marks by different

persons as a result of assignment.

9. Sec. 45 Registration of Assignment and Transmissions

The procedure for entering on the register the name of the subsequent

proprietor of the trade mark as a result of assignment or transmission is contained in

Sec. 45. 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.

The Registrar shall on receipt of the application and on proof of title to

his satisfaction, register him as the proprietor of the trade marks of the goods or

services in respect of which the assignment or transmission has effect and will be

entered in the register.

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.

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10. The Trade Marks (Amendment) Bill, 2009

For section 45 of the Principal Act the following sections shall be

substituted namely

New Sec 45

i. 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 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. *(On proof of title to his

satisfaction is deleted as per the Amendment Act 2009).

ii. The Registrar may require the applicant to furnish evidence or further

evidence in proof of title only where there is reasonable doubt about the truth of any

statement or any document furnished.

iii. 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 parties have been determined by competent court,

and *in all other cases the Registrar shall dispose of the application within the

prescribed period. *(included in the Amendment Act 2009)

iv. Until an application has been filed for registering a person as the

proprietor of the trade mark, 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.*( Included in the Amendment

Act)

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11. Parties Adversely Affected

Although the rules do not expressly require a notice to be issued or a

hearing to be given to the partly adversely affected by the order, when an application

is made before the registrar, in the eye of law, there is a necessary implication that

the party adversely affected should be heard before an order for the removal of his

name is made against him.

It is well settled that once an order is passed in violation of the principles

of natural justice, the order is void in law and if that order is relief upon it can be

challenged whenever or wherever it is produced. Where an assignment or

transmission has been entered in the register without giving notice to the affected

parties, the Registrar may expunge the entry from the register u/s.45. If the Registrar

is in doubt as to the validity of the assignment, he has a duty to hear the parties

before deciding on the matter in the interest of natural justice.

12. Assignment Registered without Hearing

An Assignment registered in the name of one partner without giving

notice to other partner, whose name was deleted from the register is against natural

justice. Rectification by the aggrieved partner is allowed and entry of assignment

cancelled.

When a suit is pending in court, relating to dispute over ownership of the

mark, petition field before the High Court to revalidate the assignment by the

assignee cannot be entertained. Under these circumstances after taking into

consideration the principles of natural justice, the Registrar has to decide if the

matter is remanded to him. If the Registrar decides in violation of natural justice, his

order may be stayed pending appeal against it.

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13. Stamping of Assignment Deed

An assignment of a trade mark is made always for a consideration. It,

therefore, attracts the provisions of the Stamp Act. However, an assignment deed

which is not properly stamped is admissible in evidence under the Stamp Act on

payment of the necessary stamp duty and penalty u/s. 37, a registered trade mark can

be assigned for any consideration which shows that the quantum or nature of the

consideration is immaterial.

14. Alteration of Registered Trade Mark necessitated by Assignment

Assignment of a registered trade mark may sometimes necessitate certain

alteration in the mark. For example, a change in the name of the proprietor. Any

such alteration can be carried out in the register only under the provisions of Sec. 59.

If the alteration would substantially affect the identity of the mark, if may not be

allowed u/.s 59 and a fresh registration of the altered mark may be necessary.

15. Assignment obtained by Fraud

If the name of a partner was got removed on the basis of a dissolution

deed which later on was shown to be fraudulent, the register will be rectified by

restoring the name of the partner removed. Where registered marks are assigned to a

third party during pendency of rectification proceedings against them, there is no

ground of refusal of registration of the assignment before the final outcome of the

rectification proceedings.

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16. Colourable Assignment

Colourable purchase of a business of small value to obtain its goodwill

for the purpose of using its name, which is similar to that of a successful competitor,

may be deemed fraudulent.

17. Assignee of a Business

The assignee of a business with goodwill, trade mark and trade name is

entitled to sell the goods under the same levels and represent themselves as the

successors to the assignees business. But, they cannot make representation that the

goods are guaranteed by the assignor, for example, by the use of the assignors

facsimile signature and words of guarantee which the assignor had used on his

labels.

18. Assignee of the Registered Mark

The Registration of the assignment is not a condition precedent to suing.

The assignee of a registered trade mark can file a suit for infringement before the

registration of the assignment is effected. The assignment confers title to the mark

on the assignee and registration of the assignment is only the completion of his title.

19. Partner, Assignee of Trade Mark

A partner has a right to associate other persons with him to carry on

business of any nature whatsoever. It is not necessary to indicate in the partnership

deed that he is the assignee of the trade mark along with the good will of business.

The partnership firm is entitled to the benefit of prior user of the trade mark

assigned. Further, when a dispute relating to a partnership firm is referred to an

arbitrator, the jurisdiction of the arbitration is wide enough to adjudicate upon the

dissolution of the firm.

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20. Erstwhile Partners right to name

A partner who has retired from a partnership firm is not entitled to use

the name of the partnership firm from which he has retired in his own new business.

21. Service Marks

Trade related Intellectual Property Rights (TRIPS) agreement, for the

first time in international law, extended the registration requirements to service

marks. Even some of the industrialized countries allowed registration of service

marks from 1960 and 1970 onwards largely reflecting the growing importance of the

service sectors in the national economics and international transactions.

22. Certification Trade mark

A Certification Trade mark means a mark capable of distinguish the

goods or services in connection with which it is used in the course of trade which is

certified by the proprietor of the mark. The function of the certification trade mark is

not to indicate trade origin but to certify the goods or services. The definition of

trade mark includes a certificate of trademark also. Certification Trade marks are

assignable or transmissible only with the consent of the registrar or trade marks.

After obtaining the necessary consent, the procedure for entering the name of the

subsequent proprietor on the register is the same as for an ordinary trade mark.

23. Collective mark

A Collective mark is defined as a trademark distinguishing the goods or

services of members of an association (not being a partnership), which is the

proprietor of the mark from those of others. Associated trade marks are assignable or

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transmissible only as a whole and not separately .The object of this provision is to

prevent the likelihood of deception or confusion arising from the use of similar trade

marks by different persons as a result of assignment.

24. Under the Trade Mark Act 1999

Trade marks shall now include services service providers will be able to

register their service marks. The period of registration of trade marks has been

enhanced from 7 years to 10 years.

The Trade marks (Amendment) Rules 2010 brought into force by the

central government with effect from 20.05.2010. Since my study is on Assignment

and Transmission , which forms part of Trade Marks Act , it is necessary to examine

rules related to research subject.

III.5. THE TRADE MARKS RULES 2002 RELATED TO ASSIGNMENT

AND TRANSMISSION

i. RULE 68. 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 in Form TM-24

or TM-23 accordingly as it is made by such person alone or conjointly with the

registered proprietor.

ii. RULE 69. Particulars to be stated in application

An application under rule 68 shall contain full particulars of the

instrument, if any, under which the applicant, or, in the case of a joint application,

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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 Registrar may require

and retain an attested copy of any instrument produced for inspection in proof of

title.

iii. RULE 70. Case accompanying application

Where a person applying under rule 68 for registration of his title, does

not establish his claim under any document 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 in Form TM-18.

iv. RULE 71. 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.

v. RULE 72. Impounding of Instruments

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

(2 of 1899).

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vi. RULE 73. 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.

vii. RULE 74. Application for Registrar's direction as to advertisement

of an assignment of a trade mark without goodwill of the business

(1) An application for directions under section 42 shall be made in 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 unregistered trade mark that has been assigned therewith. 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 41 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 made in Form TM-21.

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viii. RULE 75. Application for entry of assignment without goodwill

An application under rule 68 relating to an assignment of a trade mark in

respect of any goods or services shall state

(a) Whether the trade mark had been or was used in the business in any of

those goods or services, 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 74, and such proof,

including copies of advertisements or otherwise, as the Registrar may require, to

show that his directions have been fulfilled and if the Registrar is not satisfied that

the directions have been fulfilled, he shall not proceed with the application.

ix. RULE 76. Separate registration

Where pursuant to an application under rule 68, and as the result of a

division and separation of the goods or services 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 registrations in the names of those different persons shall be

deemed to be a separate registration for all the purposes of the Act.

x. RULE 77. 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 40 or his notification of approval under section 41 shall send to

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the Registrar with his application in 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, be 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.

xi. RULE 78. Entry in register of particulars of assignment

Where the Registrar has allowed the assignment of a trade mark under this Act,

there shall be entered in the register the following particulars of assignment, namely:

(i) The name and address of the assignee;

(ii) The date of the assignment;

(iii) Where the assignment is in respect of any right in the mark, a


description of the right assigned;

(iv) The basis under which the assignment is made; and

(v) The date on which the entry is made in the register

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xii. RULE 79. Registration of assignment to a company under section 46

For the purposes of sub-section (4) of section 46, the period within which

a company may be registered as the subsequent proprietor of a registered trade mark

upon application made under rule 68 shall be six months from 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 in Form 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.5

III.6 CHAPTER SUMMARY

The Provisions and Rules with regard to Assignment and Transmission

of trade marks in the Trade marks Act 1999 are presented in this chapter for the

better understanding of the legal compliance and legal remedies available to the

businessmen. Important dimensions of the provisions and rules were incorporated in

the present study.

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CHAPTER III END NOTES

1. Trade marks Law and Practice SARKAR Page no: 332 to 342.

2. Law of Trade Marks and Geographical Indications Law, Practice and


Procedure K C KAILASAM and RAMUVEDARAMAN Chapter V
page no 543 to 565.

3. Law of Trade Marks and Passing Off including European Law, Unfair
Competition , Trade Dress and Geographical Indication. P.NARAYANAN
Chapter 18 18.02 to 18.32. pg no 402 to 412.

4. MIPR December 2009 volume 3 E5 to E12 page no 169 to 176

5. The Trade Marks Act, 1999 [Act no 47 of 1999] [ w.e.f.15.9.2003, vide SO


no 1048(E)] along with Trade mark Rules, 2002- BARE ACT.