IP 2.11 ASSIGNMENT OF TRADEMARK
Trademark, being a property can be assigned.
At common-law, assignment ought to be made together with the goodwill of the business. To prevent confusion and deception. Also, the guarantee feature of TM needs to be protected. The U.K trademark makes such optional. Also Section 26 TMA makes a trademark assignable but not necessarily in connection with the goodwill of the business. However, the Section goes further to provide that where there is assignment without goodwill, such assignment must be advertised in the form prescribed by the registrar.
An assignee must register his title, else it is not enforceable against third parties.
The TM does not use licensing. Rather “permitted use”. Section 33 and 34 allow permitted use (subject to the control of the registrar) after the parties have applied to the registrar furnishing him with a statutory declaration stating particulars of the relationship of the parties.
The declaration should clearly state:
- The degree of control by the proprietor over the registered user.
- Restrictions with respect to characteristics of the goods
- Mode or place of permitted use.
- Duration of use. And so on.
Where the registrar is satisfied that such use would not be contrary to public order or likely to deceive, he may register such use. He may cancel such registration where it is deceptive or obtained by non-disclosure of a relevant fact or misrepresentation subject to appeal to the court.
The effect of registering permitted use is that:
- Permitted use of the mark shall be deemed to be that of the proprietor.
- The proprietor is to institute proceedings. But where the permitted user has asked him to do such to no avail within 2 months, he may sue in his own name.
- The registered user has no right to assign or transfer the use of the mark.