If you have a transaction which involves a trade mark, such as a sale or transfer of a business which has a registered trade mark, then it is advisable to notify the relevant Trade Mark registry that this has been the case.

Although there is no legal requirement to do this, there are a number of advantages to keeping the trade mark register up to date as to any changes in the ownership of the Trade Mark, some of which are listed as follows:

- Possibly the most important reason would be that any communications from the Trade Mark Registry will be sent to the proprietor (owner) of the mark they have recorded for the mark. If you do not update the information then you will not receive any reminders for renewal of the trade mark. Also you will not receive details of any third party trade mark applications which may affect your trade mark and you therefore may lose the opportunity to object or formally oppose those specific applications. Similarly, you will not be aware of any revocation proceedings against your trade mark instigated by the Trade Mark Registry or a third party.

- It will allow you to obtaining costs from a third party in an action for infringement which occurred before the transaction was registered. Please be aware that Section 25(4) of the Trade Marks Act 1994 requires that you must register the transfer of the trade mark within a 6 month period from the date of the transaction to benefit from this rule. (There are a number of exceptions to this rule – for example if it can be proven that it was not practicable to register it within the 6 month period but the transaction was registered as soon as practicably possible afterwards.

 - Where a licence is in place for the use of a trade mark then there are some advantages afforded to the Licensee:

 (a) Under section 30(2) of the Trade Marks Act 1994, a licensee can request the Licensor (owner of the mark) to commence infringement proceedings against a third party;

(b) the Licensee can then bring infringement proceedings directly against the offending third party in default of action by the registered proprietor (as per section 30(3) of the Trade Marks Act 1994);

(c) where the Licensee has an exclusive licence, it can commence infringement proceedings in its own name (section 31(1) of the Trade Marks Act 1994);

(d) the licensee can have its losses taken into account in any infringement proceedings brought by the registered proprietor against the third party.

I you have a business transaction which involves a trade mark, then please contact one of the specialists at the Trademarkroom who will be happy to advise.