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Are your trade mark details up to date

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Lawdit Solicitors - Expert Author

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Released 16 October 2008

This short article looks at further benefits of updating the trade marks register.

As it stands there are no formal requirements in place that state that a transaction relating to trade marks must be registered with the UKIPO (UK trade marks registry). Having said that we always advise clients to update the trade marks register for a number of reasons.

Firstly, the UKIPO will, in certain circumstances, only communicate with the registered Trade Mark holders for renewal reminders, issues relating to revocation proceedings and any subsequent conflicting trade mark applications that are filed by third parties so that you can decide whether to oppose those applications on relative grounds.

The change of ownership/assignment or licence set out in the transaction is ineffective against a third party who is not aware of the transaction. This is set out in section 25(3)(a) of the Trade Marks Act 1994. Also Section 25(4) of the Trade Marks Act 1994 provides that if an assignee or licensee of a registered trade mark does not apply to register the assignment or licence within a 6 month period from the date of the transaction effecting the same, he cannot claim costs in proceedings for any infringement which occurred before the transaction was registered. There are a number of exceptions to this. If it can be shown to a court that it was not practicable to register it in that period; and the transaction was registered as soon as practicable afterwards.

In addition having the updated details recorded correctly at the registry will also allow a given licensee to request that the licensor of the registered trade mark to bring infringement proceedings in relation to matters which affect the licensees interest as per section 30(2) of the Trade Marks Act 1994; to bring infringement proceedings in default of action by the registered proprietor (section 30(3) of the Trade Marks Act 1994; for an exclusive licensee, to bring infringement proceedings in the licensees own name (section 31(1) of the Trade Marks Act 1994); and to have the licensees loss taken into account in any infringement proceedings brought by the registered proprietor.

Inam Ali is a Solicitor specialising in Intellectual Property and commercial law. He can be contacted by email at inam.ali@lawdit.co.uk


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2008-10-25 00:19:43 in Legal Articles

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