Sections 40 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.
A trade mark points to one source. Sections 40 and 41 protect that idea by barring an assignment or transmission that would leave more than one person with exclusive rights in identical or nearly resembling marks in a way that would deceive or cause confusion. Section 40 deals with the general case and offers a certificate route; section 41 deals with exclusive rights split between different parts of India.
Section 40(1): notwithstanding sections 38 and 39, a mark is not assignable or transmissible if the result would be exclusive rights in more than one person for the same or similar goods or services with identical or nearly resembling marks, where use would be likely to deceive or cause confusion. A proviso saves arrangements whose limitations keep the rights from overlapping. Section 40(2): the proprietor may seek a Registrar's certificate in advance. Section 41: no assignment that would give separate exclusive rights for different places in India for the same or similar goods or services, subject to a proviso allowing the Registrar's approval in the public interest.
Section 40(1): the general bar
Notwithstanding sections 38 and 39, a trade mark "shall not be assignable or transmissible" where the assignment or transmission would leave exclusive rights, "whether under this Act or any other law", in more than one of the persons concerned, in relation to the same goods or services, the same description, or associated goods or services, of nearly resembling or identical marks, if use of the marks in exercise of those rights "would be likely to deceive or cause confusion".
The bar overrides sections 38 and 39 (registered marks and unregistered marks).
| Condition | Text |
|---|---|
| Result of the assignment or transmission | Exclusive rights subsisting in more than one of the persons concerned, under this Act or any other law |
| Goods or services | (a) the same; (b) the same description; or (c) associated with each other |
| Marks | Nearly resembling each other, or identical |
| Test | Having regard to the similarity of goods and services and of marks, use in exercise of those rights would be likely to deceive or cause confusion |
| Consequence | The mark "shall not be assignable or transmissible" |
All of these elements must be present. Associated goods or services in clause (c) widen the reach beyond identical goods. If you plan an assignment that splits a mark between two businesses, this is the first section to check. A trademark assignment transfer review can test the plan before the deed is signed.
The proviso to section 40(1)
In short: if limitations ensure that the two persons' rights cannot both be exercised for (i) goods sold or traded in India (other than for export), (ii) goods exported to the same market outside India, or (iii) services for use in India or services available for acceptance in India, the assignment is not invalid under sub-section (1). Limitations as to area or mode of use are the tools; "limitations" is defined in section 2(1) to include limitations as to mode or area of use.
Section 40(2): the certificate
The proprietor of a registered trade mark who proposes to assign it may submit a statement of case to the Registrar, who "may issue to him a certificate" on whether the proposed assignment would or would not be invalid under sub-section (1).
| Feature | Text |
|---|---|
| Who may apply | The proprietor of a registered trade mark who proposes to assign it |
| What | A statement of case, in the prescribed manner, setting out the circumstances |
| Registrar's response | "may issue" a certificate stating whether the proposed assignment would or would not be invalid under 40(1) |
| Effect | Conclusive, subject to appeal and unless obtained by fraud or misrepresentation, as to validity or invalidity so far as it depends on the facts set out |
| Time limit for a favourable certificate | Application under section 45 for registration of the new owner's title within six months from the date the certificate is issued |
The certificate is a way to settle the question before the assignment. Note the six-month condition on a certificate in favour of validity: it is conclusive only if the new owner applies to record title within six months. The Act says "the Registrar may issue"; it is not a right. The form and fee are for the Trade Marks Rules, 2017.
Section 41: different parts of India
Section 41 also opens "Notwithstanding anything in Sections 38 and 39" and bars an assignment or transmission that would leave (a) an exclusive right in one person limited to use in any place in India, and (b) an exclusive right in another person to a nearly resembling or identical mark, for the same goods or services, the same description, or associated goods or services, limited to use in any other place in India.
This is the territorial version. One person is left with exclusive rights limited to one place in India; another with exclusive rights in a similar or identical mark for the same, similar or associated goods or services in another place in India. An assignment producing that result is barred.
Unlike section 40, the text of section 41 does not mention confusion and has no certificate procedure; its only relief is the Registrar's approval under the proviso below.
The proviso to section 41
Section 41 ends with a proviso. It allows the Registrar, on application by the proprietor who proposes to assign, or by a person who claims a registered mark has been transmitted to him or his predecessor in title since the commencement of the Act, to approve an assignment or transmission if satisfied that, in all the circumstances, use of the mark in exercise of the said rights would not be contrary to the public interest. An approved assignment is not deemed invalid under section 41 or section 40, unless the approval was obtained by fraud or misrepresentation, if application to register title under section 45 is made within six months from the date the approval is given (or, in the case of a transmission, was made before that date).
Example. Gopal Sweets, Delhi, owns "GOPAL" for sweets across India. It proposes to assign the right to use "GOPAL" for sweets in Maharashtra to Gopal Mithai, keeping the rest of India. That would leave exclusive rights split by place for the same goods and an identical mark. Sections 40 and 41 are the sections to test the plan against, and a section 40(2) certificate may be sought where section 40 is concerned.
What sections 40-41 do not say
- They do not state a fee, a form or a time for the Registrar to issue a certificate.
- They do not define "associated" goods or services; see section 2(1).
- Section 41 does not itself mention confusion.
Practical points
- Map the exclusive rights after the deal. If two people end up with exclusive rights in similar marks, test against section 40.
- Use limitations. The proviso to section 40(1) turns on limitations that keep rights from overlapping.
- Seek a certificate when in doubt, and record title within six months of a favourable one.
- Do not split territorially without advice. Section 41 bars it.
Need help structuring an assignment?
If an assignment will leave more than one party with rights in similar marks, structure it carefully before signing. Our trademark assignment transfer team can review the deal against sections 40 and 41, prepare a statement of case where useful and record the new owner.
Key takeaways
- Section 40(1) bars an assignment or transmission that would create exclusive rights in more than one person in nearly resembling or identical marks for the same, similar or associated goods or services, likely to deceive or cause confusion.
- The proviso saves arrangements whose limitations keep the rights from being exercised together.
- Section 40(2) lets the proprietor of a registered mark seek a Registrar's certificate; it is conclusive subject to appeal and fraud, and, if favourable, only if title is recorded within six months.
- Section 41 bars assignments leaving exclusive place-limited rights in different persons within India.
- The proviso to section 41 allows Registrar approval where use would not be contrary to the public interest, provided title is recorded under section 45 within six months of the approval.
Read next
- Sections 37-38: power to assign and assignability of registered trade marks
- Section 39: assignment of unregistered trade marks
- Section 42: assignment without goodwill of business
- Trademark assignment deed: draft template
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.