42.—(1) Notwithstanding any rule of law or equity to the contrary, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in connection with the goodwill of a business or not.| (2) A registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible in respect either of all the goods or services in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods or services. |
| (3) Subsections (1) and (2) shall have effect in the case of an unregistered trade mark used in relation to any goods or services as they have effect in the case of a registered trade mark registered in respect of any goods or services, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods or services all of which are goods or services in relation to which the unregistered trade mark is or was used in that business and in respect of which that registered trade mark is or was assigned or transmitted. |
(4) Notwithstanding anything in subsections (1) , (2) and (3), a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which, as a result of an assignment or transmission, there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to —| (a) | the same goods or services; | | (b) | the same description of goods or services; or | | (c) | goods and services or descriptions of goods and services which are associated with each other, |
| of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods or services, or the same description of goods or services, or the association of the goods and services or descriptions of goods and services, and to the similarity of the trade marks, the use of the trade marks in exercise of those rights would be or have been likely to deceive or cause confusion: |
| Provided that, where a trade mark is or has been assigned or transmitted in such a case as aforesaid, the assignment or transmission shall not be deemed to be or to have been invalid under this subsection if the exclusive rights subsisting as a result thereof in the persons concerned respectively are or were, having regard to limitations imposed thereon, such as not to be exercisable by two or more of those persons in relation to — |
| (i) | goods to be sold or otherwise traded in within Singapore (otherwise than for export); | | (ii) | goods to be exported to the same market outside Singapore; | | (iii) | services for use in Singapore; | | (iv) | services for use in the same country or territory outside Singapore; or | | (v) | services available for acceptance in Singapore (wherever they are to be used). |
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| (5) The proprietor of a registered trade mark who proposes to assign it in respect of any goods or services in respect of which it is registered may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances, and the Registrar may issue to him a certificate stating whether, having regard to the similarity of the goods or services or the association of the goods and services or descriptions of goods and services and to the similarity of the trade marks referred to in the case, the proposed assignment of the first-mentioned trade mark would or would not be invalid under subsection (4), and a certificate so issued shall, subject to this section as to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under subsection (4) of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under section 43 of the title of the person becoming entitled is made within 6 months from the date on which the certificate is issued. [7/91] |
(6) Notwithstanding anything in subsections (1), (2) and (3), a trade mark shall not be assignable or transmissible in a case in which as a result of an assignment or transmission thereof there would in the circumstances subsist, whether under the common law or by registration —| (a) | an exclusive right in one of the persons concerned to the use of the mark limited to use in relation to goods to be sold or otherwise traded in, or to services for use or available for acceptance in a place or places in Singapore; and | | (b) | an exclusive right in another of the persons concerned to the use of a mark identical with or nearly resembling the mark referred to in paragraph (a) in relation to —| (i) | the same goods or services; | | (ii) | the same description of goods or services; or | | (iii) | goods and services or descriptions of goods or services which are associated with each other, |
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| limited to use in relation to goods to be sold, or otherwise traded in, or services for use, or available for acceptance, in another place or places in Singapore: |
| Provided that, on application in the prescribed manner by the proprietor or a trade mark who proposes to assign it, or of a person who claims that such a mark has been transmitted to him or to a predecessor in title of his, in any such case, the Registrar, if he is satisfied that in all the circumstances the use of the trade mark in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this subsection or subsection (4) so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under section 43 of the title of the person becoming entitled is made within 6 months from the date on which the approval is given or, in the case of a transmission, was made before that date. |
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[7/91] |
| (7) (Deleted by Act 7/91). |
| (8) Any decision of the Registrar under this section shall be subject to appeal to the court. [7/91] |
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