Part 10ASSIGNMENT AND TRANSMISSION OF TRADE MARKS

PART 10—ASSIGNMENT AND TRANSMISSION OF TRADE MARKS Assignment etc. of trade mark 106.(1) A registered trade mark, or a trade mark whose registration is being sought, may be assigned or transmitted under this Part. (2) The assignment or transmission may be partial, that is, it may apply to some only of the goods or services in respect of which registration is sought or the trade mark is registered, but it may not be partial in relation to the use of a trade mark in a particular area. (3) The assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods or services. Assignment of associated trade marks 107.(1) Associated trade marks may not be assigned unless they are all assigned to the same person. (a) associated trade marks have been assigned to a person; and (b) subsequently it is found that another trade mark associated with those trade marks has not been assigned to the assignee; the assignor (or, if the case so requires, his or her successor in title) must assign the other trade mark to the assignee as soon as practicable. Assignment etc. of trade mark whose registration is sought 108.(1) If a trade mark whose registration is being sought is assigned or transmitted, the person to whom it has been assigned or transmitted must apply to the Registrar for the assignment or transmission to be recorded. (3) If the application complies with the Act, the Registrar must: (a) record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the assignment or transmission; and (b) advertise the recording in the Official Journal. (4) On and after the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of this Act, to be the applicant for the registration of the trade mark. Application for record of assignment etc. of registered trade mark to be entered in Register 109.(1) A person to whom a registered trade mark has been assigned or transmitted must apply to the Registrar for a record of the assignment or transmission to be entered in the Register. Recording of assignment etc. of registered trade mark 110.(1) If the application complies with this Act, the Registrar must in accordance with the regulations: (a) enter the particulars of the assignment or transmission in the Register; and (b) register the person as the owner of the trade mark in relation to the goods or services in respect of which the assignment or transmission has effect. (2) The particulars are taken to have been entered in the Register on the day on which the application was filed, and the registration is taken to have, had effect from and including that day. (3) The Registrar must advertise the recording of the assignment or transmission in the Official Journal. Notice of application to be given to registered user etc. 111. If an application is made under section 108 or 109 in relation to the assignment or transmission of a trade mark, the Registrar must notify in accordance with the regulations: (a) any person who has applied to be registered, or is registered, as a user of the trade mark; and (b) any person recorded under Part 12 as claiming a right in respect of, or an interest in, the trade mark. Invalidity 112.(1) If the assignment of a trade mark has been recorded either in the Register or elsewhere, the assignment may not be declared to be invalid unless a court action seeking the declaration was started within the period of 3 years after the day on which the application for the assignment to be recorded was filed. (2) The assignment of a registered trade mark may not be declared to be invalid if the assignee establishes that, at the time when the action was started, the trade mark did in fact distinguish the assignee’s goods or services from: (a) if the trade mark is registered subject to the condition that the use of the trade mark is to be restricted to a particular area—the goods or services of other persons in that area; or (b) if paragraph (a) does not apply—the goods or services of all other persons.