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.

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, where multiple 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 trademarks 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 trademarks is allowed only with the consent of the Registrar. Associated trademarks are assignable and transmissible only as a whole but they will be treated as separate trade marks for all other purposes.