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Trademark, as an intellectual property, has its unique business value and is often involved in various kinds of commercial transactions. One of the most common commercial transactions is a trademark transfer, also known as a trademark assignment.
This article addresses relevant considerations when transferring a trademark. One should not confuse trademark transfer with trademark license – a trademark transfer changes the ownership of the mark, while a trademark license merely authorizes others to use the mark.
A trademark, whether registered or not, is always deemed transferable, either in connection with, or separately, from the goodwill of the business, and in respect with either all or some of the goods or services in association with which it has been used. In the same manner, a trademark still under application with CIPO is also deemed transferable. The transfer of an application or registration of the trademark is addressed mainly in Section 48 of the Trademarks Act, attached below.
Even though making a transfer record with CIPO is not required to make the transfer effective, nor is it required in the case when a transferee wishes to take legal action for trademark infringement, it is still highly advisable to record a transfer with the Trademark Office to ensure an accurate and complete record of the title of the mark.
The record process is quite simple and straightforward if it is initiated by the applicant or owner: the transferrer simply needs to provide the name and postal address of the transferee and pay the prescribed fee (CAD 100 at the time of this writing). On the other hand, if the request to transfer is made by the transferee, satisfactory evidence of the transfer is also needed by the Registrar to record the transfer, in addition to the requirements mentioned before.
A trademark can be transferred in total or partially in terms of the goods and services it is associated with. However, before initiating a partial transfer, it is important to note that a partial transfer may result in confusion between the owners of the same mark for different goods and services. Transfers or partial transfers of trademarks may also result in non-distinctiveness. The Registrar will not address these kinds of issues when recording the transfer; it takes no position to judge the likelihood of their occurrences and will not reject the transfer. The possible issues arising from confusion and/or non-distinctiveness may be addressed in the process of trademark examination, opposition and court proceedings, but not in the process of recording the transfer.
The jurisdiction of a trademark that it falls under cannot be subdivided and transferred. That is, an owner of a Canadian trademark cannot transfer ownership for someone else to use in Ontario only. The fundamental concept, when registering a trademark, is to secure exclusive rights in all provinces and territories in a jurisdiction, such as Canada.
Section 48 of the Trademarks Act
· 48 (1) A trademark, whether registered or unregistered, is transferable, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the goods or services in association with which it has been used.
· Where two or more persons interested
(2) Nothing in subsection (1) prevents a trademark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trademarks and the rights were exercised by those persons.
· Transfer of application
(3) The Registrar shall, subject to the regulations, record the transfer of an application for the registration of a trademark on the request of the applicant or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the application.
· Transfer of trademark
(4) The Registrar shall, subject to the regulations, register the transfer of any registered trademark on the request of the registered owner or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the trademark.
· Removal of recording or registration
(5) The Registrar shall remove the recording or the registration of the transfer referred to in subsection (3) or (4) on receipt of evidence satisfactory to the Registrar that the transfer should not have been recorded or registered.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case-by-case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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