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 This Act was repealed and the present law is governed by the Trade Marks Act 1999.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 77
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 This Act has again been repealed by the Trade Marks Act 1999.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. 78
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 procedures 2. 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. 79
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. 80
23. Registration of names of chemical element or international nonproprietary 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 81
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. 82
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. 83
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. 84
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. 85
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 below 4 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. 86
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. 87
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 88
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. 89
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. 90
10. The Trade Marks (Amendment) Bill, 2009 substituted namely For section 45 of the Principal Act the following sections shall be 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) 91
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. 92
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. 93
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 assignee s business. But, they cannot make representation that the goods are guaranteed by the assignor, for example, by the use of the assignor s 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. 94
20. Erstwhile Partner s 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 95
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, 96
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). 97
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. 98
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 subsection 2 of section 40 or his notification of approval under section 41 shall send to 99
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) (ii) The name and address of the assignee; 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 100
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. 101
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.