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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.