Economic, Commercial and Intellectual Property Laws · Law relating to Trade Marks

Assignment and Transmission of Registered Trade Marks

Updated 11 October 2026 · Fact-checked

Under Section 38 of the Trade Marks Act, 1999, a registered trade mark can be assigned or transmitted with or without goodwill, for all or some of the goods or services. The assignee must apply to the Registrar to register title under Section 45. A licensee is only a registered user and cannot assign.

Understand Assignment and Transmission of Registered Trade Marks

A trade mark is property. Like other property, its owner can sell it, give it away or pass it on. The Act calls the voluntary transfer an assignment and the transfer by operation of law, such as on death or by amalgamation, a transmission.

Section 38 is the starting rule. Despite any other law, a registered trade mark is assignable and transmissible. It can go with or without the goodwill of the business. It can cover all the goods or services of the registration or only some of them. Section 39 gives the same freedom for an unregistered mark.

This freedom has limits. Section 40 stops an assignment that would leave two persons with exclusive rights in identical or near-resembling marks for the same or similar goods or services, if use would be likely to deceive or cause confusion. Section 41 stops an assignment that would give exclusive rights in different parts of India for the same or resembling marks. Section 42 adds an advertisement condition when the assignment is without goodwill. Section 43 requires the Registrar's consent for a certification trade mark. Section 44 says associated trade marks go only as a whole.

After the transfer, the new owner must record title. Section 45 requires the person entitled by assignment or transmission to apply to the Registrar, who registers him as proprietor and enters the particulars on the register.

Licensing is different. The owner keeps the mark and lets another person use it under an agreement. A person registered for this under Section 49 is a registered user. Under Section 54 a registered user gets no assignable or transmissible right to use the mark.

Key rules to remember

Section 38: general rule: Registered trade mark = assignable and transmissible, with or without goodwill, for all or some of the goods or services; Subject to the other provisions of the Chapter.
Section 39: unregistered mark: Unregistered trade mark = assignable or transmissible with or without goodwill; Same freedom as for a registered mark.
Section 40: no multiple exclusive rights: Assignment invalid if it leaves exclusive rights in more than one person in identical or nearly resembling marks for same, same description or associated goods or services, and use is likely to deceive or cause confusion; Not invalid if the rights cannot be exercised by two or more persons in the same market, as in the proviso. The proprietor may seek a Registrar's certificate by statement of case.
Section 41: territorial split: No assignment that creates exclusive rights in different places in India for the same or resembling marks for the same or similar goods or services; Registrar may approve if satisfied it is not contrary to public interest. Apply for registration under Section 45 within six months of approval.
Section 42: assignment without goodwill: Assignee applies to Registrar for advertisement directions within 6 months (extendable by up to 3 months in aggregate) and advertises as directed, otherwise the assignment does not take effect; Applies to registered and unregistered marks. Exceptions: partial assignment with goodwill of those goods or services only, and export-business goodwill only.
Section 43: certification mark: Certification trade mark: assignable or transmissible only with the Registrar's consent; Application in writing in the prescribed manner.
Section 44: associated marks: Associated trade marks: assigned or transmitted only as a whole, not separately; For other purposes they are treated as separate marks.
Section 45: registration of title: Person entitled applies to Registrar; Registrar registers him as proprietor and enters particulars on the register; Until application is filed, the assignment is ineffective against a person who acquires a conflicting interest without knowledge of it (Section 45(4)).
Sections 49 and 54: registered user: Registered user = joint application by proprietor and user with written agreement and affidavit; no assignable or transmissible right; Explanation I to Section 54 protects an individual user who joins a partnership and a firm whose constitution changes, with limits on continued use.

How to solve Assignment and Transmission of Registered Trade Marks questions

Use this order for any question on assignment, transmission or licensing of a trade mark.

1Identify the mark: registered, unregistered, certification or associated. This decides the section.
2State the Section 38 rule: free assignment or transmission, with or without goodwill, for all or some goods or services.
3Check goodwill. If the assignment is without goodwill, apply Section 42 and its six-month advertisement condition, and test the two exceptions.
4Check the restrictions: Section 40 (confusing exclusive rights), Section 41 (territorial split), Section 43 (certification mark) and Section 44 (associated marks).
5Check registration of title under Section 45 and the effect of delay under Section 45(4).
6If the facts speak of permitted use by another, decide whether it is a licence. Apply Sections 49 and 54 for registered users.
7Write a clear conclusion: valid or not, effective or not, and what the party must do.

Quickest way: Four-question check

When to use it: Use this for short-answer or case-based questions when time is tight.

Was the mark sold or only licensed? Sold means assignment. Licensed means registered user.
Was goodwill transferred? If not, add the Section 42 advertisement step.
Would the deal leave two owners with confusing rights, or a territorial split? If so, Sections 40 and 41 apply.
Has the buyer applied under Section 45? If not, add the Section 45(4) risk.

Common mistakes in Assignment and Transmission of Registered Trade Marks

Saying a trade mark can be assigned only with goodwill.
Students carry over the idea that a mark is tied to the business.
Fix: Section 38 allows assignment with or without goodwill. Without goodwill, Section 42 adds the advertisement condition.
Saying a non-goodwill assignment is void.
Section 42 says it shall not take effect, which is read as invalid.
Fix: It takes effect only if the assignee applies to the Registrar within six months (extendable by up to three months in aggregate) and advertises as directed.
Treating a registered user as free to assign the mark.
Licence and assignment are mixed up.
Fix: Under Section 54 a registered user has no assignable or transmissible right. Only the proprietor transfers ownership.
Thinking the assignment fails if title is not registered.
Section 45 is read as a validity condition.
Fix: Until an application is filed, the assignment is ineffective only against a person who acquires a conflicting interest without knowledge of it. File the application promptly.
Assigning one of a set of associated marks alone.
Each mark is registered separately, so students assume separate transfer.
Fix: Under Section 44 associated marks go only as a whole.
Forgetting the Registrar's consent for certification marks.
Students apply the general Section 38 rule alone.
Fix: Section 43 requires the Registrar's consent in writing application.

Worked examples

Example 1

Shree Foods Ltd owns a registered trade mark 'SWADISHT' for biscuits and namkeen. It sells the mark for namkeen only to Anand Snacks Pvt Ltd along with the goodwill of its namkeen business. Is the assignment valid, and what must Anand Snacks do?

Show the solution

Provision: Section 38 allows assignment of a registered mark in respect of all or only some of the goods or services.
Facts: Only namkeen is assigned, with the goodwill of the namkeen business.
Section 42 Explanation (a): a partial assignment accompanied by transfer of the goodwill of those goods only is not treated as an assignment without goodwill. So the advertisement condition does not apply.
Check Section 40: both parties must not be left with confusing exclusive rights in the same or similar goods. Here the marks are identical but the goods differ (biscuits and namkeen). Food products may be of the same description, so the risk of confusion must be examined, or a certificate sought under Section 40(2).
Registration: Anand Snacks must apply under Section 45 to be registered as proprietor for namkeen.

Answer: The assignment is permitted under Section 38, and Section 42 advertisement is not needed because goodwill is transferred. It stays valid only if it does not leave both parties with confusing exclusive rights under Section 40. Shree Foods may take a Registrar's certificate under Section 40(2). Anand Snacks should apply under Section 45 to register its title.

Example 2

Kaveri Textiles, the registered proprietor of a mark, permits Ravi Garments to use it under a written agreement. Ravi is registered as a registered user. Later Ravi purports to assign his right to use the mark to Meena Fashions. Is this valid?

Show the solution

Provision: Section 49 allows registration of a registered user on a joint application with the written agreement and an affidavit.
Section 54: nothing in the Act gives a registered user any assignable or transmissible right to use the mark.
Facts: Ravi is only a registered user. The ownership stays with Kaveri Textiles.
Application: Ravi cannot pass on a right he cannot assign. The exceptions in Explanation I to Section 54 cover only a partnership by an individual user or a change in the constitution of a firm user. They do not cover a sale to a third party.

Answer: The purported assignment to Meena Fashions is not valid. Under Section 54 a registered user has no assignable or transmissible right. Only Kaveri Textiles, the proprietor, can assign the mark, subject to Sections 38 to 45.

Exam tips

Write the section number with each rule. Examiners reward Section 38 for the general rule and Section 42 for the goodwill condition.
In a case question, first classify the transaction as assignment, transmission or licence, then apply the matching sections.
Always end with a conclusion on validity, effect and the steps the party must take.
Keep the Section 42 time limits exact: six months, with an extension not exceeding three months in aggregate.
For a difference question, contrast ownership transfer (assignment) with permitted use (registered user) on control, assignability and registration.

Practice questions from Law relating to Trade Marks

Assignment and Transmission of Registered Trade Marks: frequently asked questions

Can a registered trade mark be assigned without goodwill?

Yes. Section 38 allows assignment with or without goodwill. If goodwill is not transferred, Section 42 requires the assignee to apply to the Registrar for directions and advertise the assignment within the time allowed, or the assignment does not take effect.

What is the difference between assignment and licensing of a trade mark?

In an assignment, ownership passes to the assignee, who applies under Section 45 to be registered as proprietor. In a licence, the owner keeps the mark and allows use under an agreement. A person registered under Section 49 is a registered user, who under Section 54 cannot assign or transmit the right.

How do you record a trade mark assignment in India?

The person who becomes entitled applies to the Registrar in the prescribed manner under Section 45(1). The Registrar registers him as proprietor and enters the particulars on the register. Apply early, because Section 45(4) leaves the assignment ineffective against a person who acquires a conflicting interest without knowledge of it until the application is filed.

What is transmission of a trade mark?

Transmission is a transfer by operation of law rather than by agreement, such as on death or amalgamation. Section 38 treats it like assignment, and the person entitled must also apply under Section 45 to register title.