Chapter V - Assignment and Transmission
Section 42
Section 42: Assignments without business goodwill
An assignment without the relevant business goodwill requires a timely application for advertising directions and compliance with those directions.
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Need advice on Section 42?
This article is for general information. Refer to the Trade Marks Act, 1999 official text for the official provisions. If you need professional advice for your situation, contact Bizeneed.
Statutory text
Bare law
Where an assignment of a trade mark, whether registered or unregistered is made otherwise than 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, 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, 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.
Explanation.—For the purposes of this section, an assignment of a trade mark of the following description shall not be deemed to be an assignment made otherwise than in connection with the goodwill of the business in which the mark is used, namely:—
(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.
Rule and business relevance
The assignee must apply within six months of assignment, subject to an extension allowed by the Registrar not exceeding three months in aggregate. Advertisement must follow the directed form, manner and period. The explanation identifies partial-business and export-goodwill situations not treated as goodwill-free assignments.
Limits and related provisions
Applying for directions is not the same as completing the required advertisement. Do not present the possible extension as automatic or apply this rule to a transmission without assessing the actual statutory wording.
Hypothetical business example
Hypothetical example: A buyer acquires a mark without the associated goodwill. It diaries the six-month application requirement and follows the Registrar’s advertising directions before relying on the transfer’s effect.
Practical decision flow
Determine whether the assignment is truly without goodwill under the explanation.
Apply for advertising directions within the statutory period or a lawfully allowed extension.
Complete advertisement exactly as directed and retain proof.
Applying the Act and current procedure
Read the statutory rule together with the applicable Trade Marks Rules, current Registry directions and the facts of the particular mark. Forms, fees and procedural requirements should be checked against their current official source before filing.
Practical checklist
Do
- Determine whether the assignment is truly without goodwill under the explanation.
- Apply for advertising directions within the statutory period or a lawfully allowed extension.
- Complete advertisement exactly as directed and retain proof.
Avoid
- Applying for directions is not the same as completing the required advertisement. Do not present the possible extension as automatic or apply this rule to a transmission without assessing the actual statutory wording.
Glossary
- Advertising directions
- The Registrar’s directions governing publicity of the assignment.
- Aggregate extension
- The maximum additional period of three months the Registrar may allow as stated.
Frequently asked questions
Is the possible extension automatic?
No. It is an extension the Registrar may allow.
Is six months the only relevant compliance step?
No. The assignee must also advertise as directed.
Can goodwill of only the transferred product business suffice under the explanation?
The explanation expressly addresses transfer of goodwill for the relevant subset of goods or services.
Need help applying this provision to your situation?
Contact BizeneedLast updated 10 October 2026