Assigning Trademarks Not in Connection with the Goodwill of a Business

Section 42 of the Trademarks Act (India) applies to the assignment of a trade mark, whether registered or unregistered, not made in connection with the goodwill of the business in which the mark has been or is used.

The assignment shall not take effect unless the assignee applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it in such form and manner and within such period as the Registrar may direct.

The Act says that the timeframe within which this is to be done is: ‘not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, not exceeding three months in the aggregate, as the Registrar may allow.’

Explanation:

This Section does not apply to:

(a) an assignment of a trade mark in respect only of some of the goods or services for which the trade mark is registered accompanied by the transfer of the goodwill of the business concerned in those goods or services only; or

(b) an assignment of a trade mark which is used in relation to goods exported from India or in relation to services for use outside India if the assignment is accompanied by the transfer of the goodwill of the export business only.

Protection to Foreign Trademarks

This isn't really Indian Law, but...

In the case of ITC Ltd. v. Punchgini, Inc, it was claimed that the trademark of Bukhara restaurant in New Delhi was being infringed by a restaurant name Bukhara Grill which had been opened in New York. [1] Sheppard Mullin says, “The New York State Court of Appeals concluded that while the “famous marks doctrine” itself is not recognized by New York law, New York law does provide protection to the owner of a famous mark by virtue of the owner’s prior use of the mark in a foreign country under a theory of unfair competition through misappropriation.” [2]
However, Thomas Zuber points out that ‘according to the Second Circuit’s recent ruling in ITC Ltd. v. Punchgini, Inc., No. 05-0933-cv, 2007 WL 914742 (2d Cir. March 28, 2007), there is no federal “famous marks” exception to the basic territoriality rule that the United States does not enforce trademark rights that exist only under foreign law’.(The Ninth Circuit’s decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) had earlier recognized the famous foreign trademark exception to territoriality).

Links:
[1] www.nycourts.gov/courts/appeals/decisions/dec07/165opn07.pdf
[2] www.intellectualpropertylawblog.com/archives/trademarks-and-trade-dress-court-finds-famous-foreign-trademarks-protectible.html
[3]www.ca2.uscourts.gov:8080/isysnative/RDpcT3BpbnNcT1BOXDA1LTA5MzMtY3Zfb3BuLnBkZg==/05-0933-cv_opn.pdf www.aipla.org/Content/ContentGroups/Issues_and_Advocacy/Amicus_Briefs1/20079/ITCbrief_Final_Revised2.pdf
[4] www.lawupdates.com/commentary/itc_ltd_v_punchgini_inc
[5] www.law.cornell.edu/nyctap/I07_0164.htm

The Bubble Bursts

Business Standard has reported that Candico which has been using the ‘Big Bubble’ trademark since 1989 has seen its demand for the cancellation of the Italian company Perfetti’s trademark ‘Big Babol’ which it has been using in India since 1981 dismissed by the IPAB. The Board said that it was of the view that it was for the applicant, Candico, to prove that if the mark was allowed to continue on the register it would affect their right.
I’m not sure why Candico wasn’t able to prove that the two marks, ‘Big Bubble’ and ‘Big Babol’ are not confusing.

Link: businessstandard.com/common/storypage_c.php?leftnm=10&autono=310273