what is a deed of assignment in india

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DEED OF ASSIGNMENT: EVERYTHING YOU NEED TO KNOW.

A Deed of Assignment refers to a legal document in which an assignor states his willingness to assign the ownership of his property to the assignee. The Deed of Assignment is required to effect a transfer of property and to show the legal right to possess it. It is always a subject of debate whether Deed of Assignment is a contract; a Deed of Assignment is actually a contract where the owner (the “assignor”) transfers ownership over certain property to another person (the “assignee”) by way of assignment. As a result of the assignment, the assignee steps into the shoes of the assignor and assumes all the rights and obligations pertaining to the property.

In Nigeria, a Deed of Assignment is one of the legal documents that transfer authentic legal ownership in a property. There are several other documents like a deed of gifts, Assent, etc. However, this article focuses on the deed of assignment.

It is the written proof of ownership that stipulates the kind of rights or interests being transferred to the buyer which is a legal interest.

Read Also: DIFFERENCE BETWEEN TRANSFER OF PROPERTY THROUGH WILLS AND DEED OF GIFT

CONTENTS OF A DEED OF ASSIGNMENT

Content of a Deed of Assignment matters a lot to the transaction and special skill is needed for a hitch-free transaction. The contents of a deed of assignment can be divided into 3 namely; the introductory part, the second (usually the operative part), and the concluding part.

• THE INTRODUCTORY PART: This part enumerates the preliminary matters such as the commencement date, parties in the transaction, and recitals. The parties mentioned in the deed must be legal persons which can consist of natural persons and entities with corporate personality, the name, address, and status of the parties must be included. The proper descriptions of the parties are the assignor (seller) and assignee (buyer). The Recitals give the material facts constituting the background to the current transaction in chronological order.
• THE SECOND PART (USUALLY THE OPERATIVE PART): This is the part where the interest or title in the property is actually transferred from the assignor to the assignee. It is more like the engine room of the deed of assignment. The operative part usually starts with testatum and it provides for other important clauses such as the consideration (price) of the property, the accepted receipt by the assignor, the description of the property, and the terms and conditions of the transaction.
• The testimonium : this shows that all the parties are involved in the execution of the deed.
• Execution : this means signing. The capacity of the parties (either individual, corporate bodies, illiterates) is of great essence in the mode of execution.  It is important to note that the type of parties involved determines how they will sign. Example 2 directors or a director/secretary will sign if a company is involved. In the same way, if an association, couple, individual, illiterate, family land (omonile), firm, unregistered association, etc. is involved the format of signature would be different.
• Attestation : this refers to the witnessing of the execution of the deed by witnesses.

For a Deed of Assignment to be effective, it must include a column for the Governor of the state or a representative of the Government where the property is, to sign/consent to the transaction. By virtue of Sec. 22 of the Land Use Act, and Sec. 10 Land Instrument Registration Law, the Governor must consent to the transaction.

Do you have any further questions? feel free to call Ibejulekkilawyer on 08034869295 or send a mail to [email protected] and we shall respond accordingly.

Disclaimer: The above is for information purposes only and should not be construed as legal advice. Ibejulekkilawyer.com (blog) shall not be liable to any person(s) for any damage or liability arising whatsoever following the reliance of the information contained herein. Consult us or your legal practitioner for legal advice.

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Drafting a Deed of Assignment

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Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom. Also note: This is not legal advice.

Introduction

A Deed of Assignment is a vital legal document used to transfer rights, interests or assets between parties. It is regularly used in business transactions, and often regarding real estate or intellectual property. A well-crafted deed of assignment can protect both sides from potential legal disputes, ensuring that everyone involved understands their obligations and responsibilities.

The Genie AI team has seen many instances where having a valid deed of assignment can make all the difference - without it businesses could be exposed to considerable risk. That’s why we offer free templates and step-by-step guides to help those wishing to draft their own deed.

When creating a Deed of Assignment it is important to take the specific circumstances into account - any changes or additions should be accurately documented and agreed by all involved parties beforehand. Furthermore, it is essential that the terms are clearly written out in an unambiguous way so every party knows exactly what they have signed up for. Beyond protecting both sides’ interests, this type of agreement can also be used for copyright assignments, leases, debt transfers and trusts.

Before signing on the dotted line it’s also critical that executing such documentation is done properly - all parties must sign in the presence of a witness who will also affix their signature and date the document accordingly. Once this process has been completed filings must then be made with any relevant government authorities whenever necessary (especially in cases involving real estate or intellectual property transfers).

In summary, drafting a Deed of Assignment not only safeguards everyone’s best interests but also provides additional benefits depending on its use case - reading through our step-by-step guidance below should provide you with more information on how to access our template library today and start benefitting from its advantages without needing to sign up for an account with Genie AI first!

Definitions (feel free to skip)

Legal Binding: When a legally binding document is used, it means that all parties involved are legally obligated to follow the terms and conditions set forth in the document.

Assignor: The assignor is the person who is transferring rights, interests or assets to someone else.

Assignee: The assignee is the person who is receiving the rights, interests or assets from the assignor.

Witness: A witness is an independent third-party who is present when a document is signed, in order to ensure that the process is completed in a secure and legally binding manner.

Stamp: A stamp is an official seal or mark that is used to verify and authenticate a document.

Tax: A tax is a sum of money that is paid to a government or public authority.

Duty: Duty is an obligation or responsibility assigned to someone.

Defining the Deed of Assignment

What is a deed of assignment and what is its purpose, parties involved, who needs to be involved in the making of a deed of assignment, drafting the deed, determine what kind of deed of assignment needs to be drafted, consider the subject matter to be assigned in the deed, research the legal requirements for the kind of deed to be drafted, draft the deed of assignment in accordance with the legal requirements, executing the deed, check that the parties to the deed are correctly identified, confirm that the deed is correctly signed and dated by all parties, confirm that the deed is witnessed by an independent third party, have the deed of assignment properly executed by all parties, registration, determine whether the deed of assignment needs to be registered, if registration is necessary, confirm the registration procedures, take necessary steps to register the deed of assignment, considerations, consider any applicable tax or stamp duty implications of the deed of assignment, consider any restrictions or limitations on the rights being assigned, consider whether the deed of assignment needs to be registered in any public records, common mistakes, not accurately identifying all of the parties to the deed, not having the deed properly executed by all parties, not having the deed witnessed by an independent third party, not considering any applicable tax or stamp duty implications, not considering any applicable restrictions or limitations on the rights being assigned, record keeping, ensure that the original deed of assignment is securely stored, create a digital copy of the deed and store it in a secure manner, review the deed of assignment to ensure accuracy, confirm that all steps have been completed correctly, seek advice from legal professionals if necessary, get started.

• Establish the parties involved in the Deed of Assignment
• Identify the property or service being assigned
• Specify the terms of the assignment
• Ensure the Deed of Assignment is properly witnessed
• Check that all signatures are valid

When you have completed the steps above, you will have successfully defined the Deed of Assignment and can proceed to the next step.

• A deed of assignment is a legal document that is used to transfer the rights and responsibilities of one party (the assignor) to another party (the assignee)
• It is used to transfer contractual rights and obligations between parties
• It should include information such as the names of the parties, the date of the assignment, and the description of the rights transferred
• You will know that you have completed this step when you have an understanding of what a deed of assignment is and why it is used.
• Identify the party transferring their rights (the assignor) and the party receiving the rights (the assignee)
• Draft the deed in the name of both parties, including full names and contact details
• Ensure the deed is signed by both the assignor and assignee
• Once the deed is signed, the parties should exchange copies of the document

Once the assignor and assignee have been identified and the deed has been drafted and signed, you can check this step off your list and move on to the next step.

• Identify the parties involved in the Deed of Assignment. This would typically include the assignor (the party transferring their rights or interest) and the assignee (the party receiving the rights or interest).
• Ensure that all parties involved have the legal capacity to enter into a contract.
• When all parties have been identified and their legal capacity has been verified, you can check this step off your list and move on to drafting the Deed.
• Read the applicable laws in your jurisdiction to determine the required language and structure of the Deed of Assignment
• Gather the necessary information on the parties, the asset being assigned, and other relevant details
• Draft the Deed of Assignment, taking into account all the necessary details
• Make sure the language is clear and unambiguous
• Have the Deed of Assignment reviewed by a legal professional
• When the Deed of Assignment has been drafted and reviewed, you can move on to the next step.
• Identify the type of assignment that needs to be drafted and the legal requirements that need to be satisfied
• Consider the purpose of the Deed and the rights and obligations of the parties to the Deed
• Determine if the Deed is for an absolute or conditional assignment
• Consider if the Deed should be an express or implied assignment
• Determine if the Deed needs to be in writing or if it can be oral
• Check the applicable laws in your jurisdiction to ensure that you are drafting a valid Deed
• Check if there are any additional requirements that need to be included in the Deed

When you can check this off your list: Once you have identified the type of assignment and the relevant legal requirements, you can move on to considering the subject matter to be assigned in the Deed.

• Identify the subject matter of the Deed of Assignment, such as a patent, trademark, copyright, or other intellectual property
• Assess the value of the subject matter and any associated liabilities
• Understand the relationship between the assignor and assignee
• Have all necessary documents, such as a purchase agreement, to provide more detail about the assignment

Once you have identified the subject matter of the Deed of Assignment, assessed its value, understand the relationship between the assignor and assignee, and gathered any additional documents, you can move onto the next step of researching the legal requirements for the kind of Deed to be drafted.

• Research the relevant legislation, case law, and other materials related to the Deed of Assignment to be drafted
• Consult with a lawyer familiar with the relevant law to understand the requirements
• Take detailed notes on the legal requirements that must be adhered to in the Deed of Assignment
• Once you have all the necessary information, double-check that you understand the requirements before moving on to the next step.
• Prepare the text of the Deed, ensuring that all relevant information regarding the parties, the subject matter, and the consideration is included
• Check to make sure the language conforms with relevant laws and regulations
• Have the Deed reviewed by a solicitor to ensure that it complies with all legal requirements
• Once the Deed has been approved by a solicitor, have the parties sign the document
• Once the Deed has been signed by both parties, make multiple copies and ensure each party has a copy
• This step is complete once the Deed has been signed and each party has a copy of the document.
• Ensure both parties sign the Deed of Assignment in the presence of two witnesses who are over the age of 18 and not parties to the Deed
• Have both parties sign the deed in the presence of two witnesses and have the witnesses sign the deed to attest to witnessing the signature of the parties
• Check that the parties have signed the Deed in the presence of the witnesses by noting the signatures and the dates of signature in the execution clause of the Deed
• Once the Deed has been executed, have the parties date and keep a copy of the Deed in a secure place
• You will know that you have completed this step when the Deed has been properly executed by the parties in the presence of two witnesses.
• Identify all parties to the Deed and verify that their details are correct.
• Ensure that all parties to the Deed are identified in the document and that the details of each party are accurate and up-to-date.
• Check that the names, addresses and contact details of each party are correct.
• Once you have verified that the parties and their details are correctly identified, you can move on to the next step.
• Check that all parties have signed the Deed in the correct place, and that the date of signature is correct
• Ensure that each party has signed the Deed in the presence of an independent witness
• Check that all parties have signed the Deed with their full name and title, if applicable
• Confirm that the date of signature is correct and that all parties have signed on the same date
• Once you have verified that all parties have correctly signed and dated the Deed, you can proceed to the next step.
• Ensure that the Deed is witnessed by an independent third party who is not a party to the Deed.
• Ask the third party to sign the Deed and provide their name, address, occupation and date of signing.
• Check that the third party has signed and dated the Deed.
• Once the above is complete, you can check this step off your list and move on to the next step.
• Obtain signatures from all parties on the deed of assignment, ensuring that each party signs in the presence of a witness
• Have an independent third party witness each party’s signature
• Ensure that all parties have a valid form of identification, such as a driver’s license or passport, available for inspection by the witness
• Ensure that all parties sign the deed of assignment in the presence of the witness
• Obtain the witness’ signature, confirming that all parties signed in the presence of the witness
• You will know this step is completed once all parties have signed the deed of assignment and the witness has signed confirming they were present during the signing.
• Obtain a copy of the executed Deed of Assignment from all parties
• Contact the relevant state or territory office to determine whether the Deed of Assignment needs to be registered
• If registration is required, complete the necessary forms, pay the registration fee, and submit the required documents
• Once the Deed of Assignment is registered, the registrar will issue a certificate of registration
• Check off this step when you have received and reviewed the certificate of registration.
• Research the applicable laws and regulations in the relevant jurisdiction to decide if the Deed of Assignment needs to be registered
• Consult a legal professional if unsure
• When you have the answer, you can move on to the next step.
• Confirm what type of Deed of Assignment requires registration with the relevant government agency or registry.
• Research the registration procedures and the requirements you must meet in order to register the Deed of Assignment.
• Obtain any fees or additional documents that are necessary to complete the registration process.
• Ensure that all parties to the Deed of Assignment understand the registration process and the requirements for completing it.

You can check off this step once you have researched and confirmed the registration procedures for the Deed of Assignment.

• Gather the necessary documents for registration, such as the Deed of Assignment, supporting documents, and the applicable fee
• Visit the registration office to register the Deed of Assignment
• Submit the necessary documents to the registration office
• Pay the applicable fee
• Obtain a copy of the registered Deed of Assignment
• Upon completion of the above steps, you can check this off your list and move on to the next step.
• Review and understand the nature of the rights and obligations being assigned
• Determine if there are any restrictions or limitations in the assignment
• Assess if any approvals are needed from third parties before the assignment is valid
• Confirm that the assignor has the right to assign the interest being transferred
• Check to see if the assignee has the necessary capacity to accept the assignment
• Analyze if the assignment is subject to any applicable laws or regulations
• Determine if any additional documentation is needed to support the assignment
• Once you have considered all of the above, you can proceed with drafting the Deed of Assignment.
• Check with your local taxation authority or a qualified tax professional to see if the Deed of Assignment is subject to any taxes or stamp duty.
• Ensure that the Deed of Assignment includes any required taxes or stamp duty payments.
• Check to see if the tax or stamp duty implications vary by jurisdiction.
• Once you’ve considered the tax or stamp duty implications, you can move on to the next step.
• Identify any restrictions or limitations that could affect the transfer of rights in the Deed of Assignment
• Consider whether there are any legal restrictions that must be observed in the transfer of the rights being assigned
• Research any relevant industry standards or regulations to ensure that the restrictions or limitations on the rights being assigned are compliant
• Ensure that the Deed of Assignment clearly outlines the restrictions or limitations of the rights being assigned
• When all restrictions or limitations on the rights being assigned are taken into consideration, checked for compliance and outlined in the Deed of Assignment, this step is complete.
• Consider whether the Deed of Assignment needs to be registered with any government or public agencies.
• Determine if any registration is required or optional.
• Research the relevant regulations and laws to ensure that the assignments are properly recorded.
• Check any local requirements or restrictions.
• Once you have determined that the Deed of Assignment does or does not need to be registered, you can move on to the next step in the process.

• Read over the Deed of Assignment twice to make sure you’re accurately identifying all of the parties to the Deed. Make sure you include the full names and addresses of the assignor and assignee, as well as any other relevant parties. • Check that the legal description of the subject property is accurate. • Ensure that the consideration (the amount being exchanged for the assignment) is stated clearly and accurately. • Make sure that the names of the initial parties to the Deed are also included in the recitals. • Ensure that the recitals and the express terms of the Deed are consistent with one another. • Make sure that the Deed is signed, notarized, and delivered in accordance with state law.

Once you’ve completed the above steps, you can check off this task and move on to the next step in the guide.

• Identify the assignor and assignee. The assignor is the party transferring their rights and the assignee is the party receiving the rights.
• Check all of the details are correct. This includes the names, addresses and other contact information for both parties.
• Draft the deed to ensure that the assignor and assignee are accurately identified.
• You can check this off your list and move on to the next step once you have confirmed that the assignor and assignee have been accurately identified in the deed.
• Ensure that all parties to the Deed have read, understood and agreed to the terms and conditions of the agreement.
• Have all parties affix their signature to the Deed and the accompanying documents.
• Check that all the signatures are dated and in the presence of a witness.
• When all parties have properly executed the Deed, you can move on to the next step.
• Ensure all parties have signed the Deed in the presence of a witness.
• The witness must be an independent third party who is not a party to the Deed.
• The witness must sign each page of the Deed that contains a party’s signature.
• The witness must also include their full name, address and occupation on the Deed.
• Once all of the above requirements are met, then you can check this off your list and move on to the next step.
• Determine the applicable taxes or stamp duty implications for the Deed of Assignment.
• Research any applicable taxes or stamp duty fees for the Deed of Assignment.
• Calculate the applicable taxes or stamp duty fees for the Deed of Assignment.
• Make sure to include the applicable taxes or stamp duty fees in the Deed of Assignment.

Once you have determined the applicable taxes or stamp duty implications for the Deed of Assignment, and included them in the Deed of Assignment, you can move on to the next step.

• Determine the rights that you are assigning and review any applicable laws or regulations to ensure that the assignment of such rights is permitted.
• Consider any applicable contractual restrictions or limitations on the rights being assigned, such as any applicable confidentiality obligations or restrictions on the transfer of rights.
• Once you have determined that the assignment of the rights is permitted and there are no applicable restrictions or limitations, you can proceed to the next step of recording keeping.
• Create a record of the Deed of Assignment, including the date it was executed, by each party
• Maintain a copy of the Deed of Assignment in a secure place
• Record any additional related documents, such as any security documents, release documents, or other agreements
• When all of the above have been done, you can check this off your list and move on to the next step.
• Obtain a physical copy of the original Deed of Assignment
• Ensure the original Deed is signed by both parties
• Keep the original Deed in a safe and secure place, such as a locked filing cabinet or safe
• Make sure the document is stored in a location that is accessible to both parties
• Ensure that the original Deed is not destroyed or tampered with in any way

You can check this off your list and move on to the next step once the original Deed of Assignment is safely stored in a secure location.

• Scan or take a digital photo of the original Deed of Assignment and save it to a secure location.
• Ensure that the digital copy is readable and clearly displays all of the information contained in the original document.
• Ensure that the digital copy is stored in a secure location, preferably on a cloud-based storage system or other secure server.
• Make sure that only authorized personnel have access to the digital copy of the Deed.
• When finished, you will have created a digital copy of the Deed and stored it in a secure manner.
• Read over the Deed of Assignment to ensure accuracy
• Make sure all details are correct, and all parties are named
• Verify that all signatures are complete and accurate
• Make sure the date of the assignment is correct
• Check that the document is formatted and laid out correctly
• Once you are satisfied with the accuracy of the Deed of Assignment, you can move on to the next step.
• Read through the entire document to make sure all the information is correct
• Double check that the names and details of the parties involved are spelled correctly
• Ensure that all the dates are accurate, and that any and all parties have signed the deed in the right places
• Check that the terms and conditions in the deed are consistent with the agreement between the parties
• When you have verified all the details, you can check this off your list and move on to the next step.
• Check the Deed of Assignment to ensure that all required elements are present, including accurate information and signatures of all parties.
• Verify that any and all attachments to the Deed of Assignment are included and accurate.
• Ensure that all dates, signatures, and other pieces of information are accurate and up-to-date.
• Once you’ve confirmed that all of the steps have been completed correctly, you can move on to the next step.
• Seek professional advice from a lawyer or other legal professional to ensure that the deed of assignment is legally binding and enforceable.
• Request that the legal professional checks that all steps have been completed correctly, and that the deed of assignment meets all requirements under local law.
• Ask the legal professional to provide you with written advice on any changes or revisions that may be necessary to make the deed of assignment valid and enforceable.
• Once the legal professional has confirmed that the deed is legally sound, you can check off this step and proceed with the next one.
• Research legal professionals who are able to provide advice and assistance with the drafting of a deed of assignment
• Contact the legal professionals to discuss the specific requirements and details of the deed of assignment
• Ask the legal professionals if they are able to provide advice and assistance with the deed of assignment
• Receive advice from the legal professionals and make changes to the deed of assignment accordingly
• Once you are satisfied with the changes to the deed of assignment, you can move on to the next step.

Q: Does a Deed of Assignment need to be signed?

Asked by John on April 23rd 2022. A: Yes, a Deed of Assignment needs to be signed by both the assignor and the assignee in order for it to be legally binding. The signatures should be witnessed and dated, and should be in front of an independent witness who is not related to either party. It is also important to include the relevant clauses and provisions in the deed, as these will set out the rights and obligations of each party.

Q: What is the difference between an assignment and a novation?

Asked by Sarah on July 29th 2022. A: An assignment is a transfer of rights or obligations from one party to another, while a novation is a transfer of rights or obligations from one party to another with the consent of all parties involved. An assignment does not necessarily require the consent of all parties, while a novation always requires the consent of all parties. Additionally, an assignment can transfer rights or obligations without necessarily extinguishing any pre-existing agreements, while a novation extinguishes any pre-existing agreements.

Q: Is a Deed of Assignment legally binding in different jurisdictions?

Asked by Tyler on October 17th 2022. A: Yes, a Deed of Assignment can be legally binding in different jurisdictions, though the exact requirements for validity may differ from jurisdiction to jurisdiction. In general, however, a Deed of Assignment needs to be signed by both parties and witnessed by an independent third party in order for it to be legally binding. Additionally, the deed should include all relevant clauses and provisions that are applicable in each jurisdiction.

Q: Are there any tax implications when drafting a Deed of Assignment?

Asked by Emma on January 15th 2022. A: Yes, there are tax implications that need to be taken into account when drafting a Deed of Assignment. Depending on the jurisdiction and specific tax laws, there may be tax implications for both parties if they are transferring rights or obligations under the deed. It is important to seek professional tax advice before entering into any agreement that involves transferring rights or obligations between parties as this could have significant financial implications for all involved.

Q: Do I need legal advice when drafting a Deed of Assignment?

Asked by Jacob on June 5th 2022. A: While it is not necessary to seek legal advice when drafting a Deed of Assignment, it is generally recommended in order to ensure that all relevant legal requirements are satisfied and that all involved parties are aware of their rights and obligations under the deed. It is also important to make sure that all language used in the deed is clear and unambiguous so that it can easily be understood by all parties involved.

Q: How can I ensure that my Deed of Assignment is valid?

Asked by Michael on August 28th 2022. A: In order for your Deed of Assignment to be valid, it must meet certain legal requirements which vary between jurisdictions. Generally speaking, your deed should include all relevant clauses and provisions applicable in your jurisdiction as well as signatures from both parties which should be witnessed by an independent third party who is not related to either party involved. Additionally, any language used within the document should be clear and unambiguous so that it can easily be understood by all involved parties.

Q: What information do I need to provide when drafting a Deed of Assignment?

Asked by Ashley on November 10th 2022. A: When drafting a Deed of Assignment, you will need to provide information about both parties involved such as their names, addresses, contact details and any other relevant information required under applicable laws in your jurisdiction. Additionally, you will need to include any relevant clauses or provisions applicable in your jurisdiction which will set out the rights and obligations of each party under the deed as well as any other information required for the document to be legally binding.

Q: What are common mistakes made when drafting a Deed of Assignment?

Asked by Joshua on February 20th 2022. A: One common mistake made when drafting a Deed of Assignment is failing to include all relevant clauses or provisions applicable in your jurisdiction which set out the rights and obligations of each party involved in the agreement. Additionally, failing to have the document signed by both parties or witnessed by an independent third party can render the document invalid or unenforceable under applicable law in some jurisdictions. Moreover, using ambiguous language within the document can also lead to misunderstandings and disputes further down the line which could be avoided if clear language was used throughout the document instead.

Example dispute

Lawsuit referencing a deed of assignment.

• The plaintiff may raise a lawsuit if they have been wronged by the defendant in a way that is outlined in the deed of assignment.
• For example, the deed of assignment may outline that the defendant is responsible for paying a certain amount of money to the plaintiff, and the defendant has failed to do so.
• The plaintiff may also raise a lawsuit if the defendant has failed to adhere to any other obligations laid out in the deed of assignment.
• The plaintiff would need to prove that the defendant has breached the deed of assignment in order to win the lawsuit.
• If successful, the plaintiff may be able to obtain a judgment in their favor, which may require the defendant to pay the plaintiff the money they are owed.
• In addition, the plaintiff may be able to seek other damages, such as punitive damages, if the breach of the deed of assignment was particularly egregious.
• Depending on the severity of the breach, the plaintiff may also be able to seek an injunction to prevent the defendant from continuing to breach the deed of assignment.
• Settlement of the dispute may also be possible, wherein the defendant agrees to pay a certain amount of money to the plaintiff, or agrees to adhere to the obligations laid out in the deed of assignment.

Templates available (free to use)

Deed Of Assignment For Rent Deposits Occupation Lease Deed Of Assignment Of Benefit Of Claim For The Freehold Or Extended Lease House Under Section 8 Or Section 14 Deed Of Assignment Of Equitable Interest In Residential Land Deed Of Assignment Of Goodwill And Intellectual Property Rights Transfer Of A General Partnership To An Llp Deed Of Assignment Of Property Sale Benefits [Section 42 Deed Of A

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pashyanti (legal manager)     --> 06 March 2010

difference between deed of assignment & sale deed

Dear Experts, Please tell me what is the difference between Deed of Assignment & Sale Deed?

 4 Replies

Umesh Bhatt (advocate)     --> 06 March 2010

assignment is ''a duty given to someone'' but the sale deed is ''transfer our right''. 

Suchitra. S (Advocate)     --> 06 March 2010

Deed of assignment :

Agreement under which some or all assets of an insolvent debtor are assigned to a trustee , for selling them and distributing the sale proceeds equitably among the creditors .

Sale agreement :

A sale deed acts as the main legal document for evidencing sale and transfer of ownership of property in favour of the buyer, from the seller.

Further, it also acts as the main document for further sale by the buyer as it establishes his proof of ownership of the property.

Manish Singh (Advocate)     --> 06 March 2010

Emawatson   --> 17 June 2023

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Deed of Assignment (for Intellectual Property)

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

• Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
• Date : The date on which the deed is executed should be clearly mentioned.
• Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
• Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
• Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
• Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
• Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
• Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
• Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
• Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
• Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.  

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment. 

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y. 

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

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NON-REGISTRATION OF ASSIGNMENT DEED NOT FATAL TO TRADEMARK RIGHTS OF ASSIGNEE

It’s an agreement between Assignor and Assignee which explains the rights and conditions related to patent assigned property which means intellectual property of Assignor who is holding monopoly power towards that property. Under Indian law, its mandatory to register Patent Assignment Deed under Section 68 of the Patents Act, 1970 which giving Assignee absolute rights from date of execution of deed.

Kind of assignment deed:

• Legal assignment – in this Assignee may enter his name as patent owner.  
• Equitable assignment – in this certain share is given to another person. Equitable Assignee can’t enter his name as owner but can register as having interest in the patent.  
• Mortgage – in this patent right is partially or wholly transferred to obtain money. On repayment of money, mortgagor becomes entitle to register his name as owner.

Illustration:

A is the Assignor who got grant of patent for his invented product from Government of India willing to assign that to B’s company for loyalty in terms of share of 30% from every year earnings. And further it mentions the rights and duty of Assignor and Assignee under the legal agreement. This helps parties get relief in case of breach of contractual obligations.

Who is Assignor and Assignee?

Assignor is the person who is willing to transfer the title of patent and Assignee is the person who is willing to receive the title, interest and such other rights of patent from the Assignor by giving the required consideration.

What is the advantage of Patent Assignment Deed?

• It helps parties to understand their rights and duties with respect to the said Patent.  
• Since all the provisions are written and mutually agreed upon by the parties it minimizes ambiguity. More so in case of any dispute arising between the parties it shall be resolved according to the dispute redressal clauses mentioned in the Deed.  
• Formation of assignment deed gives legality and enforceability to the transfer of any Intellectual Property.  
• An Assignment Deed is a prima facie evidence of contractual relationship between Assignor and Assignee.

What are general rights and duties of Assignor and Assignee under this deed?

• Assignor need an absolute title against the patented goods for transferring such rights to Assignee.  
• Deed need to comply with all the essentials of contract in order to execute legally. If it violates public policy or does not have a lawful consideration, then such contract is void ab initio.  
• Assignor can transfer his intellectual rights fully or conditionally to Assignee for the consideration. Consideration could be of monetary value forming a large sum or shared percentage from income or stocks exchange of the concerned parties.  
• Assignee will get the monopoly right as Assignor assigns the patented goods. Henceforth, the Assignee steps into the shoes of the Assignor and by the virtue of the deed acquires an absolute right to use and enjoy the patented goods.  
• Assignee has the right to get indemnified against any intervention/inconvenience caused while he is exercising his rights.  
• Assignee can sue for damages caused to him by Assignor’s action, it maybe mistakes or voluntary negligence/disturbance or fraudulent activity in the deed.  
• Assignee is obligated to pay the consideration mentioned if he fails to do so within a stipulated period of time. Assignor can bring a legal action for the recovery of consideration but cannot terminate the title already transferred.  
• Assignee shall pay renewal and such other charges after the assignment. Prior to the assignment the Assignor needs to ensure that the title is free from any encumbrances.

Can the Assignment Deed be Terminated/Amended?

• This amendment mostly happens in equitable assignment deed. The deed must be registered before the Controller of Patent and in case of infringement or mutual consciousness the parties may mutually agree to amend any provision of the deed.  
• Termination of the deed is unlikely as it’s irrevocable and permanent in nature. As assignment being transfer of title in a patent which is permanent. It may be terminated in case of mortgage assignment deed.

Akshay is a Language Enthusiast & an HNLU alumnus. He believes in simplicity & takes legal literacy very close to his heart.

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...execution application pursuant to the deed of assignment dated April 25, 1963. Thereafter, the execution application filed by the appellants was taken up and was dismissed on October 9, 1964, on the...-debtor and the original decree-holder subsequent to the date of assignment and with notice of assignment . One of the contentions raised before the learned Additional District Judge was that the so-called ..., however, did not express any opinion on the question whether the deed of assignment did assign the right of the decree-holder to the appellants. The assignees of the decree have preferred this appeal after...

...assigned his rights under Exhibit A-1 to Varghese for Rs 10,000. The deed of assignment is Exhibit A-24. Varghese paid Rs 7500 in cash and cheques, to Chettiar with a promissory note for balance of Rs...2500. The assignment deed refers to the sale deed obtained by Mathew. It states that the legal representatives of Sait have sold the estate to Mathew who was fully aware of the agreement for sale...Varghese armed with the deed of assignment Exhibit A-24 along with Chettiar instituted OS No. 41 of 1966 for specific performance of the agreement Exhibit A-1. The suit was instituted against Mathew and...

...other debts had been transferred by the plaintiffs to the applicants by a deed of assignment dated 7th February, 1949 which was confirmed by the Custodian of Evacuee Property, Bombay, and order them...sale deed covered the decree and, therefore, the appellant was a transferee of the decree by assignment in writing. This was sufficient to dispose of the case but the learned Judges tried to reconcile...the court should declare the respondents the assignees of the decree as the decretal debt along with other debts were transferred by Habib & Sons to them by a deed of assignment dated 7th February...

...A.K. Menon, J.:— The Applicant has moved the present Company Application seeking condonation of delay of 1 year and 34 days in the execution of the Deed of Assignment with the Official...Counsel states that by the said order this Court condoned the delay of 3 years in the execution of the Deed of Assignment and directed the Official Liquidator to execute a common Deed of ...respect of Plot Nos. A14 and A15 in favour of the Applicant within 12 weeks from today. Even though more than a year has gone by, the Applicant has not proceeded to execute this common Deed of Assignment , ...

...was a deed of assignment and not a deed of subrogation. Learned counsel appearing for the appellant reiterated the argument advanced before the High Court and contended that Exhibit P-9 in fact was a ...document. A reading of the document shows that it was a deed of assignment in favour of the Insurance Company. We are, therefore, in agreement with the view taken by the High Court. Consequently, we do not find any...the trial court came to the conclusion that the letter dated 26-7-1981 is the deed of subrogation, and, therefore, the insured being not a party to the suit, the same was not maintainable...

...amendment is filed on the basis of the deed of assignment in favour of the applicant entered into between defendant nos. 2(a) to 2(c) vide deed of assignment , dated 5th July, 201...applicant vide deed of assignment dated 5 July, 2012, by defendant nos. 3(a) to 3(e) vide deed of assignment dated 16 July, 2012 and by defendant no. 10 vide deed of .... All these assignors under the said four deeds of assignment are parties to the suit or are brought on record in view of the demise of the original defendants.3. In response to this chamber summons, ...

..., approving, engrossing and stamping the Assignment . Transfer, or Deed of Conveyance required to be executed by the party hereto of the First Part shall be borne by such society, or the incorporated body as the...consideration is as mentioned in the Deed of Assignment itself i.e no consideration”.7. All the Judges unanimously came to the conclusion that the consideration...mentioned in the document is nil. This conclusion is obvious because clause 1 of the Assignment Deed says that the Assignor assigns his rights “for no consideration”. All of them also unanimous in their...

...), New Delhi; seeking information regarding the deed of assignment in between IFCI & Kotak Mahindra bank Ltd. etc., through a total of 2 points. 2. Vide reply 22 May 2013, CPIO... of the public authority, the appellant preferred second appeal before the Commission. 4. The matter was heard today. The appellant had asked for the deed of assignment executed...between IFCL Ltd and Kotak Mahindra along with ABCD schedule. 5. The respondents stated that the deed of assignment had not been concluded yet. Besides, Kotak Mahinddra who is not a...

....4. However, an audit objection was raised by the Office of the Accountant General on the ground that the deed of assignment contained a reference to a Power of Attorney (‘PoA’ for shor..., the Full Bench of the High Court examined the recitals contained in the deed of assignment and found that the Bank had agreed to execute an irrevocable PoA in favour of the appellant herein..., substantially in the form set out in Schedule 3 of the deed of assignment . The form set out in Schedule 3 contained recitals empowering the assignee, as the agent of the Bank, to sell any immovable property...

.... Whether Defendant No. 1 in contravention of the terms and conditions of the Subscription Agreement dated 21st September, 2001 entered into the alleged Deed of Assignment dated 1 October, 2009 and/or...Supplementary Deed of Assignment dated 29th October, 2012 and Deed of Confirmation dated 29 November, 2013?iv. Whether Defendant No. 1 in contravention to the notice dated 28 July, 2009 issue...1 October, 2009 and/or Supplementary Deed of Assignment dated 29 October, 2012 and Deed of Confirmation dated 29 November, 2013 and...

...)2. The petitioner seeks quashing of the order of the Collector of Stamps assessing the stamp duty on the alleged deed of assignment dated 09.03.20063. It is contended ...learned counsel for the petitioner that the said purported deed of assignment is not a valid document inasmuch as the stamp paper of Rs. 10/-, which is affixed on page-1, does not have any endorsement...submits that the deed of assignment is forged and fabricated.5. The purported deed of assignment is sought to be relied upon by respondent No. 2 against the petitioner in a suit file...

...by the Court. On the basis of the assignment deed , the assignees made an application under Order XXII Rule 10 CPC for impleadment as parties to the final decree proceedings. It was contended on their behalf that ...that the assignors and the assignees had knowledge of the order of the injunction passed by the Court. On those facts, this Court held that the deed of assignment was not capable of conveying any...:“4. As said before, the assignment is by means of a registered deed . The assignment had taken place after the passing of the preliminary decree in which Pritam Singh has b...

..., executed a deed of assignment on 1-10-2000, assigning 50% of her right, title and interest in the said trade mark “Naturoma Herbal”, with proportional goodwill of the business concerned in the goods in... deed of assignment , with the Trade Marks Authorities, together with the fee of Rs 20 for recording the name of the appellant as the joint proprietor of the trade mark. The application for registration...appellant before the District Judge, Alipore, Kolkata. Thereafter, on 25-9-2007, the respondent cancelled the agreement dated 1-4-1999 and also revoked the deed of assignment dated 1-10-2000. The...

...in Anxs. to the Deed of Assignment , Exhibit ‘A’ or any other mark or marks or labels deceptively similar thereto.3. FAO (OS) 183/93 arises from an order dated 25th January 1993 passed by...around the Deed of Assignment dated 26th February 1991 executed between C&C and BDA. BDA claims that by virtue of the said Deed of Assignment three trade marks/brand names/labels, nam...valid consideration of Rs. 15 lacs paid by it to C&C. Before the execution of the Deed of Assignment on 26th February 1991 the parties had entered into an agreement regarding the said ...

...said judgment of the first appellate court. On 15-12-1995, by a deed of assignment Birendra Nath Dey assigned his leasehold interest in respect of 132-A, Circular Garden Reach Road, Calcutta in favour ..., the said appeals were allowed and the judgment and decree passed by the Munsif was set aside. By a deed of assignment dated 15-12-1995, the said Birendra Nath Dey assigned his leasehold right in...respect of 132-A, Circular Garden Reach Road, presently known as 132-A, Karl Marx Sarani, Kolkata in favour of the appellants. By a deed of sale executed on 15-12-1995, duly registered with the Additional...

...licence in favour of the petitioners for business of dealer in seeds under the name and style M/s. Annapurna Beej Bhandar on consideration of deed of assignment dated 01.9.2009 executed by the fat...petitioners are seeking the above-noted relief on the basis of a deed of assignment dated September 1, 2009 executed by their father. Questioning the validity of the deed of ...defendants the Civil Court has passed an interim order dated February 4, 2011 restraining the defendants in the suit from using the deed of assignment for obtaining any licence from any authority till...

...Urban Development Department, Government of West Bengal by letter dated September 30, 2010 subject to condition of submission of draft deed of assignment of lease for vetting with an affidavit by...Development Department, Government of West Bengal, the erstwhile lessees were directed to submit draft vetted deed of assignment to the Government for final vetting.3. Mr. Chatterjee, learned...counsel representing the petitioner submits that there was no need of submission of draft deed of assignment to the Government for final vetting as the Joint Secretary to the Urban Development...

...26 February, 2008 the Plaintiff executed with Defendant No. 4, a legal entity, owned and represented by Defendant No. 3, a Deed of Assignment , whereby defendant No. 4 assigned to the Plaintiff the...“Negative Rights” for the “PROGRAMME” (i.e. the Original Film) and more particularly set out in the Deed of Assignment . The Original Film “De Dhakka” was a Cinematographic Film in Marathi language which... of Assignment , Defendant No. 4 assigned the Negative Rights of the Original Film “De Dhakka” to the Plaintiff, fully and absolutely, on the terms and conditions set out in the said Deed of ...

...Gujarat is bad and illegal. Learned Senior "C"ounsel, Shri Thakore referred to the papers and submitted that as per deed of assignment of trade mark dated 3rd October, 1997, assignment of the trade mark...nowhere in the notice, it has been mentioned that the document is required to be impounded. Learned Senior "C"ounsel, Shri Thakore submitted that as could be seen from the deed of assignment , it is...evident that deed of assignment dated 3rd October, 1997 is not executed or registered in Gujarat and since it is regarding the assignment of the trade mark, it will not have any situs. Learned Senior "C"ou...

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07 August 2014

Registration of license / assignment deed under the Patents Act - Mandatory or not?

A license agreement or an assignment deed is an agreement between a right holder and the licensee and/or assignee wherein the right holder permits the licensee and/or assignee to use rights owned by the right holder in exchange for a consideration, whether in the form of a one-time settlement or a periodic royalty.Generally an agreement may be in writing or oral but Section 68 the Patents Act, 1970 (the Act)  mandates that the license/assignment agreement shall not be valid unless the same is in writing embodying all the terms and conditions governing the rights and obligations of the parties and are duly executed. Further Section 69 of the Act embodies the procedure for registration of an assignment or license agreement. The questions that arise for discussion are - what is the importance of the registration of a document under Section 69 of the Act and what are the consequences that follow if such registration is not obtained. This issue was adjudicated by the Delhi High Court by order dated 16th April, 2014 in Sergi Transformer Explosion Prevention Technologies Pvt. Ltd . v. Kumar Pratap Anil & Ors. [I.A. No. 16042/2010 in CS (OS) No. 1610/2010].

Factual background

The Plaintiff, Sergi Transformer Technologies Pvt. Ltd. (Sergi Transformer) filed a suit seeking permanent injunction against the Defendants and Mr. Phillipe Magnier (proforma defendant-the patentee) from infringing the Indian Patent No. 189089 (the suit patent) in respect of a “Method and Device for Preventing / Protecting Electrical Transformer against Explosion and Fire”. Sergi Transformer claimed to be the exclusive licensee of the above-mentioned patent by virtue of a license agreement dated 1st August, 2006. Further, it was also averred in the plaint that Sergi Transformer had initiated the process of registration of the license agreement with the Patent Office in Kolkata on 15th March, 2010. During the pendency of said suit, the Defendants filed an application under Order VII Rule 11 read with Section 151 of the Civil Procedure Code, 1908 (CPC) to dismiss the above-mentioned suit on the ground that the suit was not maintainable as the license agreement forming the basis of the said suit was not registered with the Patent office. The primary ground raised by the Defendants was that the license agreement relied upon by the Plaintiff was not a valid legal document as it has not been duly executed and it was a back-dated document that had been created to file the said suit. More importantly it was argued that although the license agreement was signed on 1st August, 2006, with effect from 1st January, 2006; it was not until 15th March 2010, that Sergi Transformer took steps to register the license as required under the Act. Sergi Transformer argued that the non-registration of a license deed does not render it void and it had written to the Controller of Patents under Section 69 of the Act to have the same registered. It was further argued that there is no bar under the provisions of Sections 109 and 69 of the Act to bring the suit against infringement and that post-amendment of the Act there is no time stipulation for filing the application before the patent office for registration of the license deed.

Delhi High Court on the  application under Order 7 Rule 11 CPC

The Delhi High Court, relying on judgment of Supreme Court in Liverpool & London S.P. & I Assn Ltd . v. M.V. Sea Success [(2004) 9 SCC 512], observed that at the stage of considering an application under Order 7 Rule 11 of the CPC, the court has to only examine the plaint averments and the list of documents filed along with the suit. The Court thus held that other pleas advanced by parties including pleadings in the written statement have no relevancy in deciding such an application.

Delhi High Court on registration of licenses under the Act

On perusing Sections 68 and 69 of the Act prior to and after the amendment in 2005, the Court observed that the un-amended Section 68 states that, a license or assignment agreement shall have effect from the date of execution, only on registration and an application for such registration has to be filed with the Controller within six months from the date of execution of document. In contrast, post-amendment under Section 69(5) of the Act, the validity of the license or assignment agreement as evidence is to be considered only after the document is registered in the office of the Controller, unless the Controller or the Court direct otherwise with reasons recorded in writing. Further under Section 69 of the Act there is no time prescribed for filing such an application for registration. The Court emphasized on a conjoint reading of Sections 68, 69, 109 and 110 of the Act. Although there exists no bar to file a suit for infringement by the exclusive licensee even if the license agreement is not registered under the Act,  in light of the wordings “unless the Controller or the Court....directs otherwise” under Section 69(5) of the Act, the Court clarified that the only case where an un-registered license or assignment agreement shall be admitted in evidence of the title of any person to a patent is if the Controller or the Court specifically directs in this regard in writing. In the instant case, though the Plaintiff had filed the license agreement before the patent office for registration, the Controller had not passed any specific order. Hence, the Court held that unless the agreement is registered or the court passes any such order, the license agreement is not to be considered in evidence by the Court. With respect to the averments on the illegality of the license agreement of Sergi Transformer, the Court held that these issues would be considered by the Patent Office when it decides on Sergi Transformer's application to register the agreement. Although the Court declined to dismiss the suit on the basis of lack of registration of Sergi Transformer's license agreement, the Court directed the Patent Office to decide on the registration of Sergi Transformer's license agreement within 6 months from the date of the order. Further, the Court also directed that all pending applications and suit proceedings in relation to the instant subject matter stand adjourned till the Patent Office passes an order on the registration of Sergi Transformer's agreement.

In the light of the above judgment, it seems that the courts are hesitant to grant any relief whether interim or final, pending registration of the patent license or assignment agreement under the Act. Thus, while it is mandatory to register the license or assignment agreement with the Patent Office, given the huge backlog of applications pending in the patent office for registration of licenses, the practice of staying proceedings pending the determination of registration of the license agreement is a matter of concern for a patentee/licensee. [ The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi ]

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Use Of Identical Mark By Subsequent Registered Proprietor Is Passing-Off

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Recently, the Delhi High Court disposed of two civil suits, one rectification petition and 10 writ petitions against the trademark registrations filed by PM Diesels for registering the mark FIELDMARSHAL in 10 Indian languages. In a dispute that had been simmering for the past 40 years, the earliest suit filed with respect to the disputed trademark "FIELDMARSHAL" was instituted vide suit no. 2408/1985 titled M/s P M Diesels Pvt Ltd vs M/s Thukral Mechanical Works. Thereafter, cross-suits were filed, and multiple proceedings were initiated over the years to claim ownership of the trademark FIELDMARSHAL.

The earliest registration of the word mark FIELDMARSHAL in favour of the plaintiff is vide Registration no. 224879 dated 16 th October 1964. P M Diesels claims continuous use since May 1963. In 1982, the Plaintiff company M/s P M Diesels Pvt Ltd had filed for registration of the trademark FIELDMARSHAL as a word mark, a logo containing the alphabets FM and as a stylised mark which was duly advertised in the trademark journal in May 1982 mentioning description of goods as Diesel engines not used in land vehicles and parts thereof, including electric motors and pumps included in class 7 and claimed continuous use since 1965. The plaintiff furnished numerous documents to substantiate these claims.

The plaintiff learned of using the mark FIELDMARSHAL in 1982 and sent a cease-and-desist notice to the defendant. However, as the defendant continued to use the mark, the plaintiff eventually instituted suit no. 2408/1985 titled M/s P M Diesels Pvt Ltd vs M/s Thukral Mechanical Works against the defendant to assert their right over the mark FIELDMARSHAL.

In the meantime, the defendant vide Assignment deed dated 30 th May 1986 obtained the mark FIELDMARSHAL, which was earlier registered by M/s Jain Industries on 13 th May 1965 with a user claim since January 1963, i.e. prior to the date of use claimed by PM Diesels. Based on this assignment, the name of Thukral Mechanical Works was recorded as the lawful owner of the mark FIELDMARSHAL in the records of the Trademark Registry and was upheld by the Registrar of Trademarks, the courts and IPAB in subsequent proceedings over the years. The plaintiff moved a cancellation petition to remove the defendant's marks on the grounds that the defendant cannot prove the use of the mark since 1963 while the plaintiff has evidence to demonstrate continuous use. The mark FIELDMARSHAL may have been registered by Jain Industries but was not used, and the company was defunct. The purchase of the mark by the defendant was motivated by the intent to claim the use of FIELDMARSHAL to benefit from the goodwill and reputation that the mark had in the market by the continuous efforts of the plaintiff since 1963. The plaintiff was aggrieved when the defendant also opposed the applications for registration of FIELDMARSHAL in Indian languages.

Analysis of the Case

All the above writ petitions, civil suits, and rectification petition were disposed of by the Delhi High Court by order dated 2 nd April 2024 to resolve the long-standing dispute between the parties. The learned Judge examined all the evidence on record and summarised the stand of the parties in her judgement to clarify that while the defendant had purchased the mark from the erstwhile registered owner, Jain Industries, in effect, the defendant had failed to establish continuous use of the mark FIELDMARSHAL before 1988.

On the contrary, the evidence on record clearly shows the use of the mark by the plaintiff since the 1960s. Numerous extracts of advertisements from leading newspapers in regional languages and invoices from different dealers, manufacturers, distributors, etc, established extensive continuous use of the mark by the plaintiff concerning centrifugal pumps and diesel engines. Thus, the argument given by the defendant that the plaintiff's use of the mark FIELDMARSHAL is limited only to diesel engines does not stand scrutiny.

Further, the defendant has admitted that they have no documentary evidence to substantiate the use of the mark by their predecessor in interest, M/s Jain Industries, who were primarily a dal and flour mill and not into the manufacture or sale of centrifugal pumps. The name FIELDMARSHAL is mentioned only at the base of one flour mill machine and does not suggest that the machine itself was being sold. The evidence on record also suggests that while the defendant was selling centrifugal pumps, the use of the name FIELDMARSHAL was not found on any documents before the 1980s that show names such as Varun, BMS or DPF, which was also substantiated by dealers, distributors and agents operating in the market.

The plaintiff learned of the alleged existence of duplicate centrifugal pumps under their brand name in the early 1980s and initiated requisite legal action. As such, despite some unsubstantiated claims by both parties, the plaintiff cannot be said to have acquiesced to a willingness to co-exist with the defendant. Moreover, after the plaintiff filed the case to stop passing off duplicate FIELDMARSHAL centrifugal pumps, the defendant approached the proprietors of M/s Jain Industries in 1986 which was defunct and purchased the trademark as per the assignment deed dated 30 th May 1986. Since the mark was not being used by Jain Industries, the argument of continuous use cannot be accepted.

The plaintiff has successfully established consistent prior use of the mark with substantial exports to countries like Sudan, Iraq, Iran, Syria, Thailand, West Germany, etc., as well as domestic sales, as evidenced by the statements of accounts and advertisements in several languages, such as Tamil, Telugu, Urdu, Punjabi, Bengali, and English, in addition to brochures from the 1970s depicting FIELDMARSHAL centrifugal pumps.

Since the initial suit filed by the plaintiff was for passing off, the concept of cognate and allied goods is ingrained in it, even if the words are not expressly mentioned. The farmer who purchases the FIELDMARSHAL brand of diesel engine and centrifugal pumps is likely to assume the submersible pump or other allied goods are also manufactured by PM Diesel since not just the class of products, but the trade channels and the end user are also identical.

Moreover, the learned single Judge also took note of the fact that the defendant had filed an application for registration of the mark FIELDMARSHAL in 1983 for centrifugal pumps, which they eventually withdrew in 1987 as they could not furnish sufficient documentary evidence of use and the mark was being opposed by the plaintiff.

Thus, having pursued the matter for 40 years, the plaintiff can in no way be said to be guilty of delay, laches, or acquiescence as it has diligently pursued several legal proceedings that include oppositions, rectifications, cancellation petitions, suits for passing off, writ petitions, etc.

Moreover, mere registration of the mark by Jain Industries without use does not create goodwill in their favour. The goodwill is generated by extensive continuous use, as demonstrated by the plaintiff. Reliance was placed on the decision of the Supreme Court in N.R. Dongre vs Whirlpool (1996) 5 SCC 714 and Neon Laboratories vs Medical Technologies Ltd (2015) 10 SCR 684 , wherein it was held that the use of an identical mark by a subsequent registered proprietor would still constitute passing off. The adoption of the mark FIELDMARSHAL by the defendant is, therefore, not honest concurrent use, and in fact, the timing of the assignment of the mark by Jain Industries itself creates doubt regarding the intention of the defendant.

Decision of the Court

Based on the foregoing analysis, a permanent injunction was granted against the defendant for using the mark FIELDMARSHAL, and the cross-suit filed by the defendant was dismissed. The registration of the mark FIELDMARSHAL bearing no. 228867 dated 13 th May 1965 in class 7, which the defendant has obtained by assignment from Jain Industries, was ordered to be cancelled and removed from the register of trademarks. All the ten writ petitions filed by PM Diesel against the defendant for registering their mark in regional languages were also allowed, with instructions from the trademark registry to issue registration certificates to the plaintiff within one month of the date of the order. The court also recognised the substantial cost incurred by the plaintiff in this prolonged legal battle and granted the actual cost of litigation to be paid to the plaintiff by the defendant.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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