An assignment that is not registered is a source of trouble. Section 74 of the Trade Marks Act (Chapter 385) explains why.
Section 74(1) — the obligation
Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall make application in the prescribed manner to the Registrar to register his title. The Registrar shall, on receipt of the application and of proof of title to his satisfaction, register that person as the proprietor of the mark for the goods in respect of which the assignment or transmission has effect, and cause particulars of the assignment or transmission to be entered in the Register.
The obligation is on the incoming owner — “he shall make application” — and it applies equally to a transmission. Under the section 1 definition, transmission means transfer by operation of law, devolution on a personal representative, and any other transfer that is not an assignment. So an executor administering a deceased estate, a company taking marks on an amalgamation, and a purchaser under a sale of business all fall within the section.
The Registrar decides what proof is required. Expect to produce the executed instrument of assignment, evidence of the parties’ corporate existence and authority to sign, and — on a transmission — the grant of probate or letters of administration, the court order, or the amalgamation documents. Section 5(1) allows the Registrar to receive evidence on oath and require the production of documents.
Note also the partial case: registration is for the goods in respect of which the assignment or transmission has effect. A mark may be assigned for some goods only, and the Register will show it.
Section 74(3) — the sanction
Except in the case of an appeal under this section or of an application under section 13, a document or instrument in respect of which no entry has been made in the Register in accordance with subsection (1) is not, unless the Court otherwise directs, admissible in evidence in a court in proof of a title to a registered trade mark.
This is the real consequence of delay. An unregistered assignee holds a document a court will not receive to prove its title — which means it cannot readily establish standing to sue for infringement, or to defend the registration.
The exceptions are narrow: an appeal under section 74 itself, a section 13 rectification application, and a direction of the Court. Relying on a judicial direction is a poor substitute for a registry entry that can be obtained as of course on proof of title.
Why registering the assignment matters
| Provision | If registered | If not registered |
|---|---|---|
| s 74(3) | Title provable in court | The instrument is not admissible to prove title, unless the Court directs |
| s 73(5) | The three-year period in which an assignment may be held invalid starts running | The clock never starts — validity remains open to challenge indefinitely |
| s 73(7) | All rights subsisting in the mark, under the Act or otherwise, are deemed assigned on the registration of the assignment | That deeming does not operate |
| s 50 | The registration of the assignment is deemed valid unless the contrary is shown | No presumption |
| s 60 | The new owner is the registered proprietor and can apply to renew | Renewal must be sought by the former proprietor |
| s 48(1) | The new owner may assign on and give good discharges | The Register still shows someone else as able to do so |
Section 60 requires renewal on application by the registered proprietor. If the Register still names the seller — who may by then be deregistered, dissolved or simply uninterested — the renewal is awkward at best. Under section 61(1) the expiry notice goes to the address in the Register, which will be the seller’s. Marks are lost this way.
Section 74(2) — appeal
A person aggrieved by a decision of the Registrar under section 74(1) may appeal to the Court. On appeal the Court’s powers under section 82 include admitting further evidence, ordering an issue of fact to be tried, and affirming, reversing or modifying the decision. See appealing a trade marks decision.
Where the dispute is about who is entitled rather than about the Registrar’s decision, the route is section 13: on the application of the Registrar or a person aggrieved, the Court may delete or amend an entry wrongly made or wrongly remaining, or correct an error or defect.
Registering title — a checklist
- Apply immediately after completion. Every consequence in the table above turns on the entry being made.
- Apply in the prescribed manner, with the fee. Under section 93(2)(c) a document is deemed not lodged until the fee is paid.
- Assemble the proof of title — the executed instrument, corporate authority, and on a transmission the grant, order or scheme documents.
- Check for associations first. Under section 29, associated marks are assignable only as a whole; dissolve the association under section 28(2) if only part of the family is being transferred.
- Deal with registered users at the same time. Under section 11(3) the Registrar may correct a registered user’s particulars, and under section 67 the registration may be varied or cancelled on the application of the proprietor and user.
- Update the address and address for service under sections 96 and 97, and the proprietor’s name under section 11(1)(b).
- Take a fresh certified extract under section 9 showing the new proprietor — admissible without further proof under section 10(2).
- Diary the renewal, and confirm the new owner will receive the section 61(1) notice.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 5, 9, 10, 11, 13, 28, 29, 48, 50, 60, 61, 67, 73, 74, 82, 93, 96, 97
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.