Uge of
trade
mark
after
change in
form of trade connexion.
Powers of. And
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40. The use of a registered trade mark in relation to goods between which and the person using it any form of connexion in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods between which and that person or a predecessor in title of his a different form of connexion in the course of trade subsisted or subsists.
Assignment and transmission.
41. (1) Notwithstanding any rule of law or equity to the restrictions Contrary, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in con- nexion with the goodwill of a business or not.
QIT
assignment and trans- mission of trade
marks.
(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 in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods.
(3) The provisions of subsections (1) and (3) shall have effect in the case of an unregistered trade mark used in relation to any goods as they have effect in the case of a registered trade mark registered in respect of any goods, 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 all of which are goods 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 transmissable 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, ex- clusive rights in more than one of the persons concerned to the use, in relation to the same goods or description of goods, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods and of the trade
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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 trans- mission 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 goods to be sold, or otherwise traded in, within the Colony (otherwise than for export therefrom), or in relation to goods to be exported to the same market outside the Colony.
(5) The proprietor of a registered trade mark who proposes to assign it in respect of any goods 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 and 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 the provisions of 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 six months from the date on which the certificate is issued.
(6) Where an assignment in respect of any goods of a trade mark that is at the time of the assignment used in a business in those goods is made on or after the commencement of this Ordinance ollierwise than in connexion with the goodwill of that business, the assignment shall not take effect until the following requirements have been satisfied, that is to say, the assignee must, not later than the expiration of six months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, apply to him for directions with respect to the advertisement of the assignment, and must advertise it in such form and manner and within such period as the Registrar may direct.