Registration of Trade Mark Transactions

Registration of Trade Mark Transactions

A registrable transaction is a transaction which affects any right in a trade mark registered in HK or a trade mark application registration filed in HK (collectively called the “TM right”).

Application for a registrable transaction has to be filed with the Registrar of Trade Marks with the relevant forms and supporting documents.    

Form T 11

Licensing of any TM right

 

Form T 10

• Assignment of any TM right
• The grant of any security interest over any TM right
• Assent by a personal representative of an estate of a Deceased in relation to any TM right
• A court order transferring any TM right

While it is not compulsory to register a registrable transaction with the Trade Mark Registrar and registration is not a pre-requisite to the validity of the underling transaction, such registration should be done to safeguard the rights of the relevant party/parties to the transaction.

Some adverse consequences for non-registration include:

• The transaction is ineffective as against a person acquiring a conflicting interest in the relevant TM right(s) without knowledge of the transaction;
• For registrable transaction of licensing of TM right, the licensee will not be entitled to various statutory protection, eg rights in relation to trade mark infringement; and/or
• The owner or a licensee of a trade mark by way of the transaction will not be entitled to damages or an account of profits for any trade mark infringement occurring after the transaction date.

For legal advice or services on IP disputes or IP infringement, please contact CHOW & CHEUNG, Hong Kong Solicitors & Notary Public. [Tel: +852 2856 3799   Email: cac@ccsn.hk]

www.ccsn.hk

 

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