How to record a trademark assignment at the Registry
The required procedure is as follows;
- The name, trade or business address and description of the assignee.
- The full particulars of the instrument, if any, under which he claims to be entitled to the Trade Mark and a copy of the said instrument. In most cases, this will be a Deed of Assignment. The copy of the deed may be retained by the registry but will not be open to public inspection. The Deed or other instruments of the title should be in English and if not, a verified English translation of the document should be provided.
- A Power of Attorney, simply signed.
Where the assignment is connected with the goodwill associated with the business, the assignee should ensure that it is recorded at the registry in order for it to be effective against third parties
Where the assignment is without the goodwill associated with the business, the Registrar may direct that the request for recordal be advertised in the Trade Marks Journal.
However, where the assignment or transmission is not recorded at the registry, and the trademark is infringed by a third party, the assignee has the option of instituting an action for passing off against the third party. This opinion can be inferred from section 3 of the Trade Marks Act.
NOTE that unregistered trademarks can also be assigned provided that at the time of the assignment:
- The unregistered Trade Mark is used in the same business as a registered Trade Mark.
- Assigned at the same time and to the same person as the registered Trade Mark.
- Assigned in respect of the same goods for which the registered Trade Mark is being assigned and in respect of all the goods in relation to which the unregistered mark is used in that business.
Do you want to assign your trademark?
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