Section 39 explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Section 39 is one sentence long. It says that an unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned. It extends to unregistered marks the same latitude that section 38 gives to registered ones, so a brand that was never registered can still be sold or pass to someone else.
"An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned." There is no requirement to transfer goodwill and no requirement that the mark be registered. Other sections still apply: section 40 and 41 limit assignments that create conflicting exclusive rights, and section 42 sets conditions where an assignment of a registered or unregistered mark is made otherwise than in connection with goodwill.
The text
"An unregistered trade mark may be assigned or transmitted with or without the goodwill of the business concerned."
| Phrase | Meaning |
|---|---|
| "An unregistered trade mark" | A mark that is not on the register; compare section 27 |
| "may be assigned or transmitted" | Both modes are allowed |
| "with or without the goodwill of the business concerned" | Goodwill may go with the mark or stay behind |
The section is permissive. It gives no procedure and states no fee, form or time limit.
Why the section matters
A mark need not be registered to have value in trade. An unregistered mark can be used and defended through the law of passing off, which section 27(2) preserves; see what is passing off in trademark law. Section 39 says that such a mark can also be transferred. A business sale, a family arrangement or an agreement to part with a brand name can therefore deal with the unregistered mark in the same way as a registered one.
If you are selling or buying a brand that is not registered, a trademark assignment transfer service helps set up the deed and the steps around it.
Sections 38 and 39 together
| Point | Registered mark (section 38) | Unregistered mark (section 39) |
|---|---|---|
| Assignable and transmissible | Yes | Yes |
| With or without goodwill | Yes | Yes |
| Partial, for some goods or services only | Section 38 says so expressly | Section 39 is silent on this point |
| Subject to | "the provisions of this Chapter" | The text of section 39 has no such opening words, but later sections speak of "a trade mark", "whether registered or unregistered" |
| Who has the power to assign | The person entered as proprietor (section 37) | Section 39 names no register entry, as an unregistered mark has none |
Section 39 does not say, as section 38 does, that the assignment may be for "some only" of the goods or services. The text is silent on partial assignment of an unregistered mark. If you plan one, say what is covered in the deed and take advice.
Other provisions that reach an unregistered mark
Section 39 is not the whole picture. Three other sections in the Chapter use words wide enough to include unregistered marks:
- Section 40(1) begins "Notwithstanding anything in Sections 38 and 39, a trade mark shall not be assignable or transmissible" where the result would be exclusive rights in more than one person to use identical or nearly resembling marks for the same or similar goods or services in a way likely to deceive or cause confusion. Section 39 is named, so the restriction applies to unregistered marks too. See sections 40-41.
- Section 41 has the same opening and deals with exclusive rights in different parts of India.
- Section 42 says: "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 ... applies to the Registrar for directions with respect to the advertisement of the assignment, and advertises it" as directed. So an assignment of an unregistered mark without goodwill carries those steps. See section 42.
Section 45, on registration of assignments and transmissions, refers to a person becoming entitled to a registered trade mark. An unregistered mark has no entry on the register to change. The text of section 39 does not say anything about recording.
Example. Sunita sells hand-made candles under the name "Sunita's Glow", never registered. She sells her business and the name to Rekha. Under section 39 the unregistered mark can be assigned with the goodwill. If Sunita instead sold only the name, without the business, section 42 would apply to the assignment: it would not take effect unless Rekha applied to the Registrar for directions on advertising and advertised as directed within the periods in that section.
What section 39 does not say
- It does not require a written assignment; the Act's text is silent. Writing is nevertheless sensible, because it fixes what is sold. A trademark assignment deed template is a starting point.
- It does not give the assignee a statutory infringement action. An unregistered mark cannot be infringed under the Act (section 27(1)), so the assignee's remedy remains passing off, as explained in infringement vs passing off.
- It does not define goodwill.
- It states no fee or form.
Practical points
- Write down what is sold: the mark, the business, the goodwill, the customer lists.
- Decide on goodwill. If it is not transferred, section 42 applies.
- Check conflicts. Sections 40 and 41 apply to unregistered marks too.
- Consider registering. An assignee who wants an infringement action must have a registered mark; see section 28.
- Keep evidence of use. The assignee's passing-off claim rests on the goodwill and use that goes with the mark.
Need help transferring an unregistered brand?
An unregistered brand can be sold, but the deed, the goodwill question and any follow-up registration need care. Our trademark assignment transfer team prepares the documents and advises on registering the mark in the buyer's name.
Key takeaways
- An unregistered trade mark may be assigned or transmitted with or without goodwill.
- The section gives no procedure, fee or form.
- Sections 40 and 41 expressly override sections 38 and 39; section 42 covers assignments of unregistered marks without goodwill.
- The text of section 39 does not mention partial assignment.
- An assignee cannot sue for infringement of an unregistered mark; section 27(1) bars it.
Read next
- Sections 37-38: power to assign and assignability of registered trade marks
- Sections 40-41: restrictions on assignment creating multiple exclusive rights
- Section 42: assignment without goodwill of business
- Section 27: unregistered trade marks and passing off
Disclaimer: Based on the Trade Marks Act, 1999 as amended by the Tribunals Reforms Act, 2021 and the Jan Vishwas (Amendment of Provisions) Act, 2023, as consulted on 1 October 2026. Forms, fees and procedure are set by the Trade Marks Rules, 2017 as amended from time to time. This article is general information, not legal advice; check the official text before acting.