Trade Marks Act 1998 · 2020 Revised Edition · Part 4 · Registered Trade Mark as Object of Property
39. Registration of transactions affecting registered trade mark
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Registrar
“Registrar” means the Registrar of Trade Marks mentioned in section 62 and includes any Deputy Registrar of Trade Marks mentioned in that section;
a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction; or
any other person claiming to be affected by such a transaction,the prescribed particulars of the transaction must be entered in the register.
The following are registrable transactions under subsection (1):
an assignment of a registered trade mark or any right in it;
the grant of a licence under a registered trade mark;
the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;
the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it;
an order of the Court or other competent authority transferring a registered trade mark or any right in or under it.
Until an application has been made for the registration of the prescribed particulars of a registrable transaction mentioned in subsection (2)(a), (c), (d) or (e), the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of the transaction.
trade mark
“trade mark” means any sign capable of being represented graphically and which is capable of distinguishing goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person;
A person who becomes the proprietor of a registered trade mark by virtue of any registrable transaction mentioned in subsection (2)(a), (c), (d) or (e) is not entitled to damages, an account of profits or statutory damages under section 31(5)(c) in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of the application for the registration of the prescribed particulars of the transaction.
proprietor
“proprietor” means —(a)in relation to a registered trade mark — the person in whose name the trade mark is registered; or(b)in relation to an unregistered trade mark that is a well known trade mark — the person to whom the trade mark belongs;
To avoid doubt, subsections (3) and (4) do not apply to any registrable transaction relating to —
a licence under a registered trade mark; or
any right in or under the licence.
Provision may be made by rules as to —
the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence; and
the removal of such particulars from the register —
where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired; or
where no such period is indicated and, after such period as may be prescribed, the Registrar has notified the parties of his or her intention to remove the particulars from the register.
Provision may also be made by rules as to the amendment of or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.
register
“register” means the register of trade marks maintained by the Registrar under section 66;