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An applicant seeking registration of identical or similar trade
marks in the same or related classes is required to associate the
marks (S.14, Trade Marks Act B.E. 2534, as amended by Trade Marks
Act (No.2) B.E. 2543). Associated marks may be assigned or
transferred only when all are assigned or transferred together
(S.50).
Once marks have been associated, they cannot be dissociated. It
is, therefore, important to object at the outset to any order for
association that is not properly based. Association does not pose
any problem for trade mark owners who are using all the associated
marks themselves, or for those who are transferring all the marks
to a third party. It does, however, pose a problem for trade mark
owners who wish to transfer only some of the associated marks to a
third party e.g. in connection with a transfer of part of the
business.
Currently, a trade mark owner wishing to transfer only some of
the associated marks to a third party has only two options, neither
of which is likely to be attractive. He can assign some of the
marks to the third party and cancel the remaining associated marks,
an option that will not be acceptable where the trade mark owner
wishes to continue using the marks. Or he can retain all the
associated marks and license some of them to the third party, an
option that may not be attractive to the third party - and that
will not be available where the parties have agreed on a global
assignment.
Proposed amendments to the Trade Marks Act seek to resolve some
of these issues. The amendments, which were proposed in September
2006, but have not yet been enacted, are available on the
Department of Intellectual Property's website. It is proposed
that the current Section 50 should be amended to read:
"Associated trade marks may be assigned or transferred by
succession only when all of them are assigned or transferred
together except where there are special circumstances or it can be
proved to the Registrar that such assignment or transfer of the
trade marks will not cause the public to be confused or misled as
to the owner or the origins of the goods. The Registrar may issue
an order to allow for the associated trade mark to be separately
assigned or transferred by succession. For such purposes, the
Registrar may impose conditions or restrictions as to the method or
area of use of the trade marks or any other conditions or
restrictions as the Registrar see appropriate."
While it is not clear what would constitute 'special
circumstances' or be accepted as adequate proof that assignment
of some of the marks will not cause the public to be confused or
misled, the proposed amendment does at least introduce the
possibility of the separate assignment of associated marks.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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