GOODWILL AND THE ASSIGNMENT OF TRADE MARKS PDF Print E-mail
Written by Ron Wheeldon   
Wednesday, 21 December 2011 18:48

 

In terms of Section 39(1) of the Trade Marks Act of 1993;

"Subject to any rights appearing from the register, a registered trade mark is assignable and transmissable, either in connection with or without the goodwill of the business concerned in the goods or services in respect of which it has been registered".

In carrying on practice in the game of trade marks over the last 18 years, I have discovered that most people, whether they be businessmen, accountants or even attorneys, and even several attorneys practising in trade mark field, do not understand when an assignment should be expressed as "with goodwill" or "without goodwill".  The registry has also had some difficulty with this and the result is that the official records show numerous examples of assignments with goodwill that are expressed to be without it, and vice versa, and then there are those that ignore the issue altogether! The latter school are multiplying rapidly as, unlike the form TM14 which formed part of the regulations under the 1963 Trade Marks Act and which required a statement as to whether the assignment was with or without goodwill to be entered onto the form, rather than simply appearing from the Deed of Assignment or such other evidence of title as the assignee might put before the Registrar, the present form, the form TM6, does not specifically call for this information although it could of course be supplied under "reasons for application".

In my opinion it is perfectly clear that the Registrar should require this information since he is directed – by the peremptory language of the Act – "to cause particulars of the assignments or transmission to be entered in the register."  This is precisely the same language used in the previous Act under which it was trite that this information must be entered.

 

Last Updated on Wednesday, 21 December 2011 21:34