How to assign a trademark
How to assign a trademark
- The assignee applies to the Registrar within 6 months from the date of the assignment for direction to advertise the assignment;
- The assignee advertises the assignment in the form and manner directed by the registrar.
- The registrar shall also cause a notice of the assignment to be published in the Trade Marks Journal.
The assignment of a trademark must be in writing specifying the terms and conditions of transfer.
Failure to comply with this directive implies that the assignee acquires no title or rights under the assignment.
Any person who becomes entitled to a trademark by virtue of assignment or transmission can file an application for recording his name as the registered proprietor of the mark assigned or transmitted. The application can be brought by either the assignee or assignor and assignee.
However the assignee is always advised to take proactive steps in recording the assignment because an action for infringement of a trademark can be sustained only by the registered proprietor, that is, the person whose name has been entered in the register as the proprietor of the trade mark.
Failure to record an assignment with the Registry means it is ineffective against a third party subsequently acquiring, in good faith, a conflicting interest in or under the Trade Mark. This failure can also mean that the assignee will not be entitled to damages or an account of profits in infringement proceedings.
Due to the risks to the assignee from not recording the assignment of a Trade Mark, it is good practice for the assignee to be proactive in ensuring its registration and should never simply rely on the assignor to record the assignment.
The Trade Marks Act provides for an application to be made to record the assignment conjointly by the assignee and the assignor or in the alternative the assignee can make the application solely.
Do you want to assign your trademark?
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