The Trade Marks (International Registration) Order 1996

Notification of transactions

6.—(1) The following are notifiable transactions for the purposes of this article—

(a) the grant of a licence under a protected international trade mark (UK);

(b) the granting of any security interest (whether fixed or floating) over an international trade mark (UK) or any right in or under it.

(2) On application being made to the registrar by—

(a) a person claiming to be entitled to an interest in or under an international trade mark (UK) by virtue of a notifiable transaction, or

(b) any other person claiming to be affected by such a transaction,

the prescribed particulars of the transaction shall be entered in the supplementary register.

(3) The following are relevant transactions for the purposes of this article—

(a) a notifiable transaction;

(b) an assignment of an international trade mark (UK) or any right in it;

(c) the making by personal representatives of an assent in relation to an international trade mark (UK) or any right in or under it;

(d) an order of a court or other competent authority transferring an international trade mark (UK) or any right in or under it.

(4) Until (in the case of a notifiable transaction) an application has been made for registration of the prescribed particulars or (in the case of any other relevant transaction) the transaction has been recorded in the International Register—

(a) the transaction is ineffective as against a person acquiring an interest in or under the international trade mark (UK) in ignorance of it, and

(b) a person claiming to be a licensee by virtue of the transaction does not have the protection of section 30 or 31 (rights and remedies of licensee in relation to infringement).

(5) Where a person becomes the proprietor or a licensee of an international trade mark (UK) by virtue of a relevant transaction, then unless—

(a) an application for registration of the transaction (in the case of a notifiable transaction) is made, or (in the case of any other relevant transaction) a request for recordal in the International Register is made, before the end of a period of six months beginning with its date, or

(b) the court is satisfied that it was not practicable for such an application or request for recordal to be made before the end of that period and that an application or request for recordal (as the case may be) was made as soon as practicable thereafter,

he is not entitled to damages or an account of profits in respect of any infringement of the international trade mark (UK) occurring after the date of the transaction and before (in the case of a notifiable transaction) the prescribed particulars of the transaction are registered or (in the case of any other relevant transaction) the transaction is recorded in the International Register.

(6) “Prescribed particulars” means the particulars prescribed by rule 34.