Sections 28 to 30 of the Trade Marks Act (Chapter 385) deal with a proprietor who holds several closely related marks.
Section 28(1) — when marks are associated
(a) is substantially identical with another mark which is registered, or the subject of an application, in the name of the same proprietor for the same goods or goods of the same description; or
(b) so nearly resembles such a mark as to be likely to deceive or cause confusion if used by a person other than the proprietor,
the Registrar may, at any time, require that the marks be entered in the Register as associated trade marks.
The purpose is straightforward. A proprietor may build a family of marks — a house mark, variants, a stylised and a plain version, a mark and its distinctive element. If those could be sold off separately to different owners, the public would face precisely the confusion the Act exists to prevent. Association ties them together.
The power is not confined to examination. The Registrar may require association after registration — typically when a later application by the same proprietor is examined and an earlier registration is found to be too close.
Note also that association only arises between marks of the same proprietor. Where the marks belong to different people, the questions are section 24 registrability, section 26 concurrent use, and section 49(3).
Section 28(2) and (3) — dissolving the association
On application by the registered proprietor of two or more associated marks, the Registrar may, if satisfied that there would be no likelihood of deception or confusion being caused, dissolve the association with respect to one or more of them and amend the Register accordingly.
A person aggrieved by a decision under subsection (1) or (2) may appeal to the Court (s 28(3)). Dissolution matters most when a business is being restructured or a brand sold: until the association is dissolved, section 29 prevents the marks being separated.
Section 29 — assignable only as a whole
Associated trade marks are assignable or transmissible only as a whole and not separately — but, subject to this Act, they shall for all other purposes be deemed to have been registered as separate trade marks.
The consequences are practical and often overlooked:
- A sale of one mark in a family requires the whole family to go with it, or the association to be dissolved first under section 28(2).
- The same applies to transmission — which section 1 defines as transmission by operation of law, devolution on a personal representative, and any other transfer that is not an assignment. So a family of marks cannot be split on a deceased estate or a corporate amalgamation either.
- Under section 31(2), every mark in a registered series is deemed to be an associated mark. A series is therefore also indivisible.
- For all other purposes the marks are separate: separate renewals, separate specifications, separate registered user entries, separate exposure to non-use removal.
Where only part of a family is being sold: first apply under section 28(2) to dissolve the association, satisfying the Registrar there is no likelihood of deception or confusion; then assign under section 73; then register the assignment under section 74. Doing it in the other order produces an assignment that cannot be given effect.
Section 30 — the real benefit of association
Where use of a trade mark is required to be proved for any purpose, the Registrar or the Court may, if and so far as he or it thinks right, accept:
• use of an associated registered trade mark; or
• use of the trade mark with additions or alterations not substantially affecting its identity,
as an equivalent for the use required to be proved.
The use of the whole of a registered trade mark shall be deemed to be also a use of any registered trade mark, being a part of it, registered in the name of the same proprietor.
Under section 14, a registration can be removed for three years of continuous non-use. Brands evolve; a proprietor may have registered a mark in 1998 and used a modernised version ever since. Section 30 is what saves the older registration: use of the associated mark, or use with additions or alterations not substantially affecting the identity, may be accepted as the required use.
Section 30(2) goes further and is automatic: use of the whole mark is use of any registered part of it in the same name. So a proprietor who registers both the composite mark and its distinctive core keeps both alive by using the composite.
Section 30 also supports proof of use for distinctiveness under sections 15(2) and 17(2)(b), and for honest concurrent use under section 26. And section 17(3) adds a further route: pre-application use by a person under the applicant’s control, consent and authority who will become a registered user may be treated as the applicant’s own use.
Using associations deliberately
- Register the core element as well as the composite. Section 30(2) then keeps the core registration alive automatically through use of the composite.
- Register significant variants — a stylised and a plain version, a mark with and without the descriptive tagline. Expect the Registrar to require association under section 28(1).
- Use a series under section 31 where the variation is only colour, price, place names or other non-distinctive matter — one registration, one renewal.
- Keep the association map current. Know which marks are tied to which before any sale, licence or restructure.
- Dissolve before you divest. Section 28(2) first, then section 73.
- Do not let association substitute for use. Section 30(1) is a discretion — “if and so far as he or it thinks right” — not an entitlement.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 14, 15, 17, 24, 26, 28–31, 49, 73, 74
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.