Section 42 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 38 and section 39 allow a trade mark to be assigned with or without goodwill. Section 42 adds a condition to the second case. If a mark, registered or unregistered, is assigned without the goodwill of the business, the assignment does not take effect unless the assignee applies to the Registrar for directions and advertises the assignment as directed, within strict periods. A trademark assignment transfer adviser can track those periods for you.
Where an assignment of a trade mark, whether registered or unregistered, is made otherwise than in connection with the goodwill of the business, it shall not take effect unless the assignee, not later than six months from the date of the assignment (or within an extended period of up to three months in the aggregate allowed by the Registrar), applies to the Registrar for directions on advertisement and advertises the assignment in the form, manner and period the Registrar directs. An Explanation lists two assignments that are not treated as being without goodwill.
The text
"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."
| Element | Text | Meaning |
|---|---|---|
| When it applies | Assignment "otherwise than in connection with the goodwill of the business in which the mark has been or is used" | Goodwill does not go with the mark |
| Which marks | "whether registered or unregistered" | Both kinds |
| Consequence | "the assignment shall not take effect unless" | The condition is a precondition to effect |
| Who must act | The assignee | Not the assignor |
| Step 1 | Apply to the Registrar for directions with respect to the advertisement of the assignment | Within six months from the date of the assignment, or within an extended period the Registrar may allow |
| Extension | "such extended period, if any, not exceeding three months in the aggregate" | At most three months in total, and only if the Registrar allows |
| Step 2 | Advertise it in the form, manner and period the Registrar directs | The Registrar sets the details |
The consequence is severe: the assignment "shall not take effect" if the steps are not taken. The section does not say what the position is in the meantime, nor what happens to the mark; take advice if the six months or the extended period is at risk. See also sections 37-38 and section 39, which allow assignment with or without goodwill. For the commercial picture, read assignment of trademark with and without goodwill.
Counting the periods
| Period | Source | Notes |
|---|---|---|
| Six months | From the date on which the assignment is made | The text says "the date on which the assignment is made" |
| Extension | Up to three months in the aggregate | Only as the Registrar may allow |
| Maximum | Nine months in total on the face of the text | Six plus an extension not exceeding three |
| Advertisement period | As the Registrar may direct | Not fixed in the Act |
The figures are the ones in the section itself: "six months" and "three months in the aggregate". Section 42 has not been amended on these points.
The Explanation: two assignments treated as with goodwill
"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."
| Case | What the Explanation says |
|---|---|
| (a) Partial assignment | A mark assigned for only some of the registered goods or services, with the goodwill of the business concerned in those goods or services only |
| (b) Export business | A mark used for goods exported from India or for services for use outside India, assigned with the goodwill of the export business only |
In these two cases the assignment is not deemed to be one without goodwill, so the section 42 steps are not triggered. Both depend on the goodwill actually being transferred: "accompanied by the transfer of the goodwill".
Example 1. Sharma Garments owns "SHARMA STYLE" for shirts and trousers. It sells the mark for trousers only, together with the goodwill of the trousers business. Under clause (a) of the Explanation, this is not an assignment made otherwise than in connection with goodwill.
Example 2. Delhi Handicrafts sells only its mark and no business to Neeraj, and does not transfer goodwill. The assignment will not take effect unless Neeraj applies to the Registrar for directions within six months (or the extended period) and advertises as directed.
What the section does not say
- It does not state a fee or form for the application for directions.
- It does not define goodwill.
- It does not say what the advertisement looks like or where it appears; the Registrar directs.
- It does not say who bears the cost.
Interaction with other provisions
- Recording title: a person who becomes entitled to a registered mark applies to register his title under section 45. Section 42 is a separate step; it is a condition on the assignment taking effect.
- Restrictions: sections 40 and 41 can bar an assignment altogether; see sections 40-41.
Practical points
- Decide goodwill at the start. If goodwill is transferred, the section 42 steps may not be needed. If it is not, they are mandatory.
- Diary six months from the assignment date. Add a reminder for the extension option, which is discretionary.
- Prepare for advertisement. The Registrar directs the form, manner and period.
- Use the Explanation carefully. Partial and export assignments qualify only if the goodwill of that business is also transferred.
- Document the goodwill. The deed should say what goodwill passes.
Need help with an assignment without goodwill?
If the deed does not transfer the goodwill, the clock in section 42 starts on the date of the assignment. Our trademark assignment transfer team applies to the Registrar for directions, arranges the advertisement as directed and keeps the dates.
Key takeaways
- An assignment of a registered or unregistered mark otherwise than in connection with goodwill does not take effect unless the assignee applies for directions and advertises as directed.
- The application is due within six months from the assignment, or within an extended period of up to three months in the aggregate if the Registrar allows.
- The Registrar sets the form, manner and period of advertisement.
- The Explanation excludes a partial assignment with goodwill of those goods or services only, and an export-business assignment with goodwill of the export business only.
- The section states no fee.
Read next
- Sections 40-41: restrictions on assignment creating multiple exclusive rights
- Sections 43-44: assignment of certification and associated trade marks
- Section 39: assignment of unregistered trade marks
- Specimen deed of assignment of a registered trademark
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.