Section 45 of The Trade Marks Act, 1999
1[45. Registration of assignments and transmissions.--(1) 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 the 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.
- (2)The Registrar may require the applicant to furnish evidence or further evidence in proof of title only where there is a reasonable doubt about the veracity of any statement or any document furnished.
- (3)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 and in all other cases the Registrar shall dispose of the application within the prescribed period.
- (4)Until an application under sub-section (1) has been filed, 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.]
Summary
- This provision requires anyone who acquires a registered trademark to apply to the Registrar to officially record their new ownership.
- The Registrar will register the new owner for the specific goods or services transferred and update the official register.
- If the Registrar doubts the truthfulness of the application documents, they can demand further evidence to prove the transfer is valid.
- If there is a legal dispute between parties over who truly owns the transferred rights, the Registrar can refuse to record the transfer until a court resolves the issue.
- A trademark transfer is not legally effective against someone who unknowingly acquires conflicting rights to the mark until the official application is filed.
Practical examples
FAQ
1. Do I need to notify the government if I buy a registered trademark?
Yes, under Section 45 of The Trade Marks Act, 1999, you must apply to the Registrar to officially register your title to the newly acquired trademark.
2. What happens if two different businesses claim they bought the same trademark?
Under Section 45 of the Trade Marks statute, the Registrar can refuse to register the transfer until a competent court decides which business is the rightful owner.
3. Are my trademark rights protected before I file the transfer paperwork?
Not fully, because under Section 45 of the 1999 Act, the transfer is ineffective against anyone who unknowingly acquires conflicting rights to the mark before you file your application.
Test yourself
Q1.Under Section 45 of The Trade Marks Act, 1999, what must a person do after acquiring a registered trademark through an assignment?
Q2.What action can the Registrar take if they have reasonable doubt about the documents submitted under Section 45 of The Trade Marks Act, 1999?
Q3.Under Section 45 of The Trade Marks Act, 1999, what happens if the validity of a trademark transfer is actively disputed between two parties?
Q4.According to Section 45 of The Trade Marks Act, 1999, until an application to register a transfer is filed, the transfer is ineffective against whom?