How to assign a trademark

How to assign a trademark

October 19, 2018

How to assign a trademark

  1. The assignee applies to the Registrar within 6 months from the date of the assignment for direction to advertise the assignment;
  2. The assignee advertises the assignment in the form and manner directed by the registrar.
  3. 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?

Do you have any question or clarification regarding the topic in this post that was not answered/provided by this post? Or you have questions regarding what the law states about a particular legal issue? Log on to our website – www.618bees.com or call us on 012803791 to speak to any of our consultants that are always on hand to provide answers to such questions.

Team 618 Bees

 

 

The information in this blog post (“post”) is provided for general informational purposes only, no information contained in this post should be construed as legal advice, nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through this post without seeking the appropriate legal or professional advice from the particular facts and circumstances at issue from a lawyer. This post is protected by intellectual property law and regulations. It may however be shared using appropriate sharing tools provided that our authorship is always acknowledged and this Disclaimer Notice attached.This post is protected by intellectual property law and regulations. It may however be shared using appropriate sharing tools provided that our authorship is always acknowledged and this Disclaimer Notice attached.

 

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  • When are Annual Returns due for filing?

    A company’s first Annual Returns are due for filing after 18 months of its inception, subsequently it should be filed annually as the name implies. The filing dates could differ for each company depending on their financial year end but must be filed not later than 42 days after its Annual General Meeting.

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  • Must my Company Secretary be a Lawyer?

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  • Why do I need a trademark?

    You need to register your trademark because if you don’t register it, someone else can! It helps identify you as the source ad indicates a consistent level of quality of your products and services. Securing a registered trademark protects your brand, and provides you with tools to prevent someone else from using similar signs and riding off the back of your business.

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