What are trademark assignments and trademark applications?

A trademark that has been registered or that has been applied for can be transferred from one person to another (see sections 27(2) and 31(1)). The instrument that gives legal effect to the transfer is known as an "assignment." The assignor must sign a written assignment of a registered trademark or an application for registration of a trademark (sections 27(4) and 31(1)).

Sections 27(3) and 31(1) allow a trademark assignment to be limited to some but not all goods or services covered by the registration or application. A partial application assignment effectively functions as a partition of the application.

Application of the Trade Marks Ordinance

 A registrable transaction is an assignment of a registered trademark application for the registration of a trademark (articles 29(2)(a) and 31). The project is ineffective against a person who acquires a conflicting interest without knowing until the particulars of the assignment are filed for registration (sections 29(3)(a) and 31(3)).

The assignee will not be entitled to damages or an account of profits for infringements for the period before particulars of the assignment are made unless they are filed before the end of the 6-month term beginning on the date of the work (sections 29(4)(a) and 31(3)).

Examining applications/notices to register particulars

The following are factors to consider when assessing petitions for registration of particulars or notices of registration of details of assignments:

Is the application to register particulars (related to registered mark(s)) or notice to report facts (relating to the application(s) for registration) on Form T10 (rule 62(1))?

Was the required fee (Fee No. 19) paid at the time of filing? More than one registered mark or application for registration can be referenced in an application/notice to record particulars of one registrable transaction.

Is the application made by or on behalf of the assignor (section 29(1)(b)) or the assignee (section 29(1)(a)) and signed by or on their behalf? The application does not need to be supported by documentary evidence of the transaction signed by or on behalf of the assignor (regulation 62(2)). The application must be accompanied by documentary proof of the transaction, such as a copy of the assignment if it is not signed by or on behalf of the assignor (regulation 62(2)). (Rule 69(1)(r)) This document will be available for public view.

Registering particulars of an assignment

In the register, the following items are recorded:

The name and address of the assignee (rules 63(1)(a)(i) and 63(1)(b)(i));

If the assignee is a corporation, the place where the corporation was founded, registered, incorporated, or created under the laws of that jurisdiction (regulation 63(1)(a)(ia) and (b)(ia));

The assignment's due date (rules 63(1)(a)(ii) and (b)(ii));

A description of the right assigned in an assignment of any right (rule 63(1)(b)(iii));

The date the entry is made in the register (rule 63(2)); and the date of the application for particulars registration or the giving of notice (sections 29(3)(a), 29(4)(a), and 31).

Conclusion

As a result of a corporate merger, the litigation lawyer assigns a registered trademark or an application to register a trademark. The transfer of the merging company's assets, including any trademarks, to the new corporate entity, may be effective once the merger is registered by the appropriate companies' registering body in the company's country or state of formation, depending on the applicable law. In such circumstances, a certificate of merger or a verified extract from the firms' or commercial register is frequently used to prove the assignment.

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