ASSIGNMENT AND TRANSMISSION :
Assignment and Transmission have been defined under Section 2(1) (b) and 2(1)( zc) of the Trade Marks Act, 1999 respectively. Section 2(1) (b) defines “assignment” as assignment in writing by act of the parties concerned. Under section 2(1)(zc) “transmission” means transmission by operation of law, devaluation on the personal representative of a deceased person and any other mode of transfer, not being assignment.
Assignment of trade mark involves transfer of ownership of the trade mark to another person or entity. The provisions concerning assignment and transmission of trade mark are contained in section 37 to 45 if the Trade marks Act, 1999 read with rule 68 to 79 of the trade marks rules.
Section 37 entitles the registered proprietor of a trade mark to assign the trade mark and to give effectual receipts for any consideration for such assignment. Under the new Act, a registered trade mark is assignable and transmissible whether with or without goodwill of the business either in respect of all goods or services or part thereof. The assignment or transmission of trade mark has been prohibited under Section 40, wheremultiple exclusive rights would be created in more than one person in relation to same goods or services; same description of goods or services; or goods or services or description of goods or services associated with each other, the use of such trade marks would be likely to deceive or cause confusion.
Assignment of a trade mark without goodwill of business is not allowed unless the assignor obtains directions of the Registrar and advertises the assignment as per the Registrar’s directions. The assignment and transmission of certification trade marks is allowed only with the consent of the Registrar. Associated trade marks are assignable and transmissible only as a whole but they will be treated as separate trade marks for all other purposes.
The assignment and transmission of trade marks is are absolute. The validity of the assignment can be challenged only on the basis of the provisions contained in Sections 37 to 45 of Trade Marks Act, 1999.