s.39Registration of transactions affecting registered trade mark
39
Section 39Part 5 — NATURE OF REGISTERED MARK AND LICENSING

Registration of transactions affecting registered trade mark

←→ Navigate  ·  Click subsection badges to collapse  ·  Press ? for help

On application being made to the Registrar by — (a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction; or (b) any other person claiming to be affected by a registrable transaction, the prescribed particulars of the transaction shall be entered in the Register.
a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction; or
any other person claiming to be affected by a registrable transaction,
The following are registrable transactions — (a) an assignment of a registered trade mark or any right in it; (b) the grant of a licence under a registered trade mark; (c) the grant of any security interest, whether fixed or floating, over a registered trade mark or any right in or under it; (d) the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it; (e) an order of a court or any authority recognized by the Registrar as a competent authority transferring a registered trade mark or any right in or under it.
an assignment of a registered trade mark or any right in it;
the grant of a licence under a registered trade mark;
the grant of any security interest, whether fixed or floating, over a registered trade mark or any right in or under it;
the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it;
an order of a court or any authority recognized by the Registrar as a competent authority transferring a registered trade mark or any right in or under it.
Until an application has been made for registration of the prescribed particulars of a registrable transaction — (a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction; and (b) a person claiming to be a licensee by virtue of the transaction does not have the protection provided by section 42.
the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction; and
a person claiming to be a licensee by virtue of the transaction does not have the protection provided by section 42.
Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction, then unless — (a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning on the date of the transaction; or (b) the Court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter, that person is not entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the prescribed particulars of the transaction are registered.
an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning on the date of the transaction; or
the Court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter,
The Cabinet may make regulations for — (a) the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence; (b) the removal of such particulars from the Register — (i) where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired; or (ii) where no such period is indicated and, after such period as may be prescribed, the Registrar has notified the parties of the Registrar's intention to remove the particulars from the Register; or (c) the amendment of or removal from the Register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.
the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence;
the removal of such particulars from the Register —
where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired; or
where no such period is indicated and, after such period as may be prescribed, the Registrar has notified the parties of the Registrar's intention to remove the particulars from the Register; or
the amendment of or removal from the Register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.

Defined Terms

registrable transactionproprietorlicenseeassentsecurity interest

Cross References

Referenced By