Other entities may use your trade mark through license agreements. A license agreement may be executed for a registered trade mark, or a trade mark application in respect of which an application for registration is pending, or an unregistered trade mark. The license agreement in respect of a registered trade mark may be registered on the Trade Marks Register as a registered user agreement.
The advantages of registering the license agreement as a registered user agreement are as follows:
In order to register the license agreement, the proprietor of the mark and the licensee must apply jointly to register the trade mark license by completing the prescribed application form, paying the prescribed fee and filing the agreement at the Intellectual Property Office. The registered proprietor of the mark must also furnish a statutory declaration that provides the relevant particulars required by the Controller.
Yes. The registered proprietor of a trade mark may apply to the Controller to vary the registered user entry. A registered user entry may also be cancelled at the request of the registered proprietor or registered user of the mark. Any third party may apply to cancel the registered user agreement on any of the following grounds:
The Controller may also cancel the registered user agreement in respect of any goods in relation to which the mark is no longer registered.
Yes. The new owner of a registered trade mark must register the transfer of title at the Intellectual Property Office.
The parties must execute an assignment document, complete the prescribed application form, file same at the Intellectual Property Office and pay the prescribed fees.
An assignment may or may not include goodwill. If a trade mark is assigned without goodwill, the assignee must no later than six (6) months from the date on which the assignment was made or such extended period, apply to the Controller for directions with respect to the advertisement of the assignment and must advertise the assignment in such form and manner and within such period as the Controller may direct.
A trade mark will not be assignable if the assignment of the mark is likely to deceive or cause confusion as to the source of the goods or services. Associated marks must be assigned together, not separately.