Trade Marks Act, 1999

Section 45
Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark

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