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Ownership and Transfer of Trademark


Ownership and Transfer of Trademark
Ownership and Transfer of Trademark

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Section 38 of the relevant legislation addresses the assignability and transmissibility of registered trademarks. It asserts that a registered trademark can be transferred to another party, regardless of any conflicting provisions in other laws.


The transfer can include the goodwill associated with the business, and it can pertain to all or only some of the goods or services covered by the trademark registration.



Provisions for Assignment by Registered Proprietor (Section 37)


Section 37 outlines the provisions enabling a registered proprietor to assign a trademark and acknowledge receipt of consideration. Upon such assignment, the original proprietor relinquishes all rights to the trademark, which are then vested in the assignee.



Assignment of Unregistered Trademarks (Section 39)


Section 39 addresses the assignability and transmissibility of unregistered trademarks, stating that such trademarks can be assigned or transmitted with or without the goodwill of the business concerned.

 
 

Restrictions on Assignment (Section 40)


Section 40 imposes restrictions on the assignment or transmission of a trademark when it would create multiple exclusive rights. It prohibits assignment or transmission if it would result in exclusive rights to similar or identical trademarks that could potentially deceive or cause confusion.



Registrar's Role in Assignment Approval (Section 40)


The section further elaborates that the Registrar may issue a certificate stating whether a proposed assignment would be valid, considering the similarity of goods and trademarks involved. This certificate is conclusive evidence of the assignment's validity or invalidity, subject to certain conditions and time limits.



Geographic Restrictions on Assignment (Section 41)


Section 41 places restrictions on assignment or transmission when it would create exclusive rights in different parts of India. However, it provides for exceptions upon application to the Registrar, subject to public interest considerations.



Assignment Conditions (Section 42)


Section 42 sets conditions for the assignment of trademarks not associated with the goodwill of a business. It specifies requirements for advertisement and registration with the Registrar.



Certification Trademarks (Section 43)


Section 43 mandates that certification trademarks require consent from the Registrar for assignment or transmission, necessitating a written application in the prescribed manner.



Registration of Assignments and Transmissions (Section 45)


Section 45 deals with the registration process for assignments and transmissions of registered trademarks. It requires applicants to register their title with the Registrar, with details entered into the register.



In cases of dispute, registration may be withheld until resolved by a competent court. Unregistered documents related to assignments or transmissions are generally not admissible as evidence without specific direction from the Registrar or court.

 
 



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