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| ITMA Review May 2014 |
You will know that you don't need a deed to transfer a trademark but quite frequently one is prepared. This is normally because there is no consideration for the assignment. In my opinion, an assignment a UK trademark or a community trademark is not necessarily a contract provided it satisfies the statutory provisions. There are others who disagree notably the writer of the latest ITMA article on the subject who believes that an assignment must be a contract. See Page 15 of the May 14 ITMA Review.
Anyway if you want to prepare a deed of assignment, it would be good if you had it executed properly. She an interesting case here Briggs v Gleeds where a whole load of pension deeds were considered to be void for improper execution by individuals. The case was highlighted by Nabarro in an April alert here.
The rules are simple and to be found in the Law of Property (Miscellaneous Provisions) Act 1989
"An instrument is validly executed as a deed by an individual if, and only if—
(a) it is signed—
(i) by him in the presence of a witness who attests the signature; or
(ii) at his direction and in his presence and the presence of two witnesses who each attest the
signature …."
Since I write (for free) the chapter on Assignments in the ludicrously expensive Trade Mark Handbook I made a note of the case for the next update but really did not think it was likely that a registered trade mark agent would be making such a simple mistake, so I was rather surprised that the very next Deed I looked at was simply signed by the individual assignor. It had been prepared very recently by an IPReg regulated agent from a well known firm so I expect he had read my Chapter and decided to submit it to OHIM anyway for recordal because it did satisfy the provisions of the CTMR which just require a signature from each party.
So what do you think? The deed is void so the assignment did not happen. So what is the status of the ownership of the CTM - shall I ask for rectification of the register?
Should you be reading this with a guilty conscience, there is likely the option of re-executing the void deed and resolving the problem that way. I am sure that's what your insurer would want.
What if the document is executed in the United States with respect to all trademarks owned worldwide? The document is valid in the country of execution. Transactional documents in the United States, like the transfer of a business, are rarely witnessed.
ReplyDeleteThis document was explicitly under English law. If the document is valid on its own frame of reference, then that is OK and OHIM will only ask for the assignees signature. For a UK trademark and I suspect also the US a signature of the assignor is all that is needed
ReplyDeleteThe issue here appears to concern the meaning of "assignment". Assignment normally refers to any transfer of property and in the case of UK trade marks includes transfer by way of testamentary disposition or operation of the law (ie transfer other than by contract). A Deed is a speciality contract. The ITMA article first identifies the non-contractual means of transfer before discussing the legal requirements for an assignment by contract. There doesn't, therefore, appear to be any disagreement.
ReplyDeleteThe issue here appears to concern the meaning of "assignment". Assignment normally refers to any transfer of property and in the case of UK trade marks includes transfer by way of testamentary disposition or operation of the law (ie transfer other than by contract). A Deed is a speciality contract. The ITMA article first identifies the non-contractual means of transfer before discussing the legal requirements for an assignment by contract. There doesn't, therefore, appear to be any disagreement.
ReplyDeleteWhen I read (as above) "there is no consideration" thoughts race back to those (very early) sessions on English contract law where "contract" is compared and contrasted with "gift". TMA 1994 s22 says a registered trade mark is personal property. Wondering whether transferee under the "ineffective deed" should (if there's no consideration) invoke the (English law) "bare trust" ? Which plays out as the UK / OHIM record being accurate (there's "writing" and its "signed") but transferee's title being "equitable" only ? Check the cases on what happens when one adult (the trustee) holds (personal) property on "bare trust" for another (the beneficiary) and the beneficiary dies ? Doesn't the trustee then hold on trust for those who inherit (personal) property from that beneficiary ?
ReplyDeleteToo many questions - agree with basic premise that - if you have to transfer by deed - GET IT RIGHT !
Sorry - extra point - thinking things over - presumably the pension deeds (void per decision) didn't have a complication like
ReplyDeleteTMA 1994 s24(3) to contend with ?
I have posted some comments on these issues on IP Draughts.
ReplyDeletehttp://ipdraughts.wordpress.com/2014/05/06/execution-of-ip-assignments-as-deeds/
Thank you Mark for your excellent contribution linked HERE
ReplyDeleteNigel the point is that a contract can be executed as a deed but that a deed does not need to be a contract. As a trademark agent we would normally draft it as a deed if there was no indication of consideration so no contract. If there is consideration you don't have to bother with formalities of execution at all.
Barbara, the issue is whether for a trade mark assignment a deed is accepted as being a specialty and the definition of specialty is accepted as being "a contract entered into by deed". The 1998 Law Commission report concluded that all deeds are specialties so that if that conclusion and definition of specialty are accepted a deed assigning a trade mark will be a contract. I appreciate that there is scope to argue this point.
ReplyDelete