Assignment and transmission of trade marks — Intellectual Property Rights I Notes

Assignment and transmission of trade marks

A trade mark is a saleable asset. When Coca-Cola bought the “MAAZA” mark for India, it bought the goodwill with it. But the law watches such deals carefully — an assignment that would leave two people owning confusingly similar rights is not allowed.

Assignment and transmission — ss.37–45

Assignment (s.37) is a transfer by act of parties of the ownership of a registered (or unregistered) mark. Transmission is a transfer by operation of law — devolution, succession, court order (not assignment).
A mark may be assigned with goodwill (the business’s reputation goes with it) or without goodwill (s.39) — the latter being subject to safeguards.
Restrictions to prevent confusion:
- s.40 bars an assignment that would create exclusive rights in more than one person for the same or similar goods, if it would cause confusion.
- s.41 bars an assignment that would create exclusive rights in different parts of India to the same/similar goods if confusing.
An assignment must be recorded with the Registrar (s.45) to be effective against third parties; the assignee applies to register title.

The controlling idea: an assignment is valid unless it multiplies confusingly similar rights among different owners.

Trade Marks Act, 1999, s.37: “The person for the time being entered in the register as proprietor of a trade mark shall… have power to assign the trade mark, and to give effectual receipts for any consideration for such assignment.”

Trade Marks Act, 1999, s.40(1): a trade mark is not assignable “in a case in which as a result of the assignment there would… subsist… exclusive rights in more than one of the persons concerned to the use, in relation to (a) same goods or services, (b) same description of goods or services… of trade marks nearly resembling each other… if… the use of the trade marks… would be likely to deceive or cause confusion.”

In Simple Terms: You can sell a trade mark (assignment) or it can pass by law (transmission), with or without the underlying goodwill. The catch: the deal is void if it ends up with two owners holding confusingly similar marks for the same goods. Record the assignment with the Registrar.

🧩 WORKED EXAMPLE — the MAAZA assignment

Facts. A company assigns its “MAAZA” mark to another company “with all intellectual property rights and its goodwill in India” for mango drinks.

Rule. ss.37–39 — a mark may be assigned with goodwill; s.40 only bars assignments creating confusing multiple ownership.

Apply. The assignment transfers the whole mark and goodwill to a single assignee for the same goods; there is no splitting that creates two confusingly similar owners, so s.40 is not offended.

Conclusion. The MAAZA assignment with goodwill is valid; the assignee should record its title with the Registrar (s.45).

flowchart TD
    ASG["Transfer of a trade mark"]:::root
    ASG --> A["Assignment (s.37) — by act of parties"]:::leaf
    ASG --> T["Transmission — by operation of law"]:::leaf
    A --> WG["With goodwill / without goodwill (s.39)"]:::leaf
    ASG --> LIM{"Creates confusing multiple ownership?"}
    LIM -->|"Yes"| VOID["Barred (ss.40-41)"]:::leaf
    LIM -->|"No"| OK["Valid; record with Registrar (s.45)"]:::leaf
    classDef root fill:#FFF8DC,stroke:#000,color:#000;
    classDef leaf fill:#E6F3FF,stroke:#1E3A8A,color:#000;

Case Laws

Coca-Cola Company v Bisleri International (2009) — the MAAZA assignment with goodwill was upheld; the assignee acquired the mark and could restrain the assignor’s later use.
Modi Entertainment Network v W.S.G. Cricket Pte Ltd (2003) — deals concerning marks/rights are enforced according to their terms and the confusion-prevention safeguards.

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