Entry in register of particulars of registrable transactions
54.—(1) The prescribed particulars of a transaction to which section 39 of the Act applies to be entered in the register are —
(a)
in the case of an assignment of a registered trade mark or any right in it —
(i)
the name and address of the subsequent proprietor;
(ii)
the date of the assignment; and
(iii)
where the assignment is in respect of any right in the trade mark, a description of the right assigned;
(b)
in the case of the grant of a licence under a registered trade mark —
(i)
the name and address of the licensee;
(ii)
where the licence is an exclusive licence, that fact;
(iii)
where the licence is limited, a description of the limitation; and
(iv)
the duration of the licence if the same is, or is ascertainable as, a definite period;
(c)
in the case of the grant of any security interest over a registered trade mark or any right in or under it —
(i)
the name and address of the grantee;
(ii)
the nature of the interest (whether fixed or floating); and
(iii)
the extent of the security and the right in or under the trade mark secured;
(d)
in the case of the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it —
(i)
the name and address of the person in whom the trade mark or any right in or under it vests by virtue of an assent; and
(ii)
the date of the assent; and
(e)
in the case of an order of the Court or other competent authority transferring a registered trade mark or any right in or under it —
(i)
the name and address of the transferee;
(ii)
the date of the order; and
(iii)
where the transfer is in respect of a right in the trade mark, a description of the right transferred.
(2) In each of the cases mentioned in paragraph (1), there shall be entered in the register the date on which the entry is made.
Application to register or give notice of transaction
55.—(1) An application to register particulars of a transaction to which section 39 of the Act applies shall be made, and a notice to be given to the Registrar of particulars of a transaction to which section 41 of the Act applies shall be —
(a)
in the case of any assignment or transaction other than a transaction referred to in sub-paragraphs (b) to (e), on Form TM 22;
(b)
in the case of the grant of a licence, on Form TM 37;
(c)
in the case of an amendment to a licence, on Form TM 38;
(d)
in the case of a termination of a licence, on Form TM 39;
(e)
in the case of the grant, amendment or termination of any security interest, on Form TM 46; and
(f)
in the case of the making by personal representatives of an assent in relation to, or of an order of the Court or other competent authority transferring, a registered trade mark, an application for registration of a trade mark, or any right in or under a registered trade mark or an application for registration of a trade mark, on Form TM 20.
(2) Where an application under paragraph (1) is filed other than by means of the electronic online system, the application shall be —
(a)
signed by or on behalf of all the parties to the assignment or transaction, in the case of an assignment or transaction referred to in paragraph (1)(a);
(b)
signed by or on behalf of both the personal representative and the beneficiary, in the case of the making by a personal representative of an assent referred to in paragraph (1)(f);
(c)
accompanied by any documentary evidence which in the Registrar’s view is sufficient to establish the transaction, in the case of an order of the Court or other competent authority referred to in paragraph (1)(f); and
(d)
signed by or on behalf of the grantor of the licence or security interest, in any other case.
(3) Where an application under paragraph (1) is filed by means of the electronic online system, the application shall be authorised by all relevant parties and be validated by such means as the Registrar considers fit.
(3A) Where an application under paragraph (1) is not signed in accordance with paragraph (2)(a), (b) or (d), or not authorised and validated in accordance with paragraph (3), the application shall be accompanied —
(a)
in the case of an assignment (of a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1)(a), at the option of the applicant, by —
(i)
a certified copy of the contract of assignment;
(ii)
a certified extract of the contract of assignment, being an extract which shows the change in the ownership of the registered trade mark or application for registration;
(iii)
a certificate of transfer of the registered trade mark or application for registration in such form as the Registrar may require, being a certificate signed by all parties to the assignment;
(iv)
a transfer document relating to the registered trade mark or application for registration in such form as the Registrar may require, being a document signed by all parties to the assignment; or
(v)
a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the assignment;
(b)
in the case of a grant of a licence (under a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1)(b), at the option of the applicant, by —
(i)
a certified extract of the licence contract, being an extract which shows the parties to the contract and the rights which are licensed under the contract;
(ii)
a statement of the licence containing such information as the Registrar may require, being a statement signed by both the person granting the licence and the licensee; or
(iii)
a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the grant of the licence;
(c)
in the case of an amendment to, or a termination of, a licence (under a registered trade mark or an application for registration of a trade mark) referred to in paragraph (1)(c) or (d), at the option of the applicant, by —
(i)
a statement of the amendment or termination of the licence, as the case may be, containing such information as the Registrar may require, being a statement signed by both the person granting the licence and the licensee; or
(ii)
a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the amendment or termination of the licence, as the case may be; or
(d)
in any other case, by a certified copy of any documentary evidence which in the Registrar’s view is sufficient to establish the transaction.
(3B) Where an application under paragraph (1) is filed by means of the electronic online system, the document referred to in paragraph (3A)(a)(i), (ii), (iii), (iv) or (v) shall be filed within such time as the Registrar may specify.
(3C) The Registrar shall refuse to accept an application under paragraph (1) if paragraph (2), (3), (3A) or (3B) is not complied with and in such event, the Registrar may require a fresh application to be made.
(4) For the purposes of this rule, where a party required to sign the application is a corporation, it is sufficient for that party to seal the application with its corporate seal.
(5) The Registrar may require the applicant to furnish such other document, instrument and information in support of the application as the Registrar thinks fit, within such time as the Registrar may specify.
(5A) If the applicant wishes to have an extension of time to comply with the requirement referred to in paragraph (5), he shall file with the Registrar a request for an extension of time in Form TM 49 before the expiry of the time specified by the Registrar or any extended period previously allowed by the Registrar.
(6) Where the transaction is effected by an instrument chargeable with duty, the application shall be subject to the Registrar being satisfied that the instrument has been duly stamped.