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Section 81 - Commissioner's Certificate That Relates to Certain Assignments or Transmissions

131. Under section 31(4) of the Trade Marks Act 1953 (the "old Act"), a trade mark was not to be assigned to another person where this would result in identical or confusingly similar marks for the same or similar goods remaining on the register where this would likely to deceive or confuse. It was common, therefore, for a trade mark owner who was proposing to assign a registered trade mark to another person to request that the Commissioner under section 31(5) provide a certificate stating whether or not the proposed assignment would be valid under section 31(4).

132. When the Trade Marks Act 2002 was enacted the prohibition on assignments of trade marks that were likely to deceive or confuse was removed. It was considered that the owner's own interests, the rectification provisions within the Act and computerisation of the register to facilitate remote searching of the register would be sufficient safeguards to prevent confusion or deception occurring. Under section 82 the Trade Marks Act 2002 a trade mark may now be assigned on the Commissioner receiving proof of the new owner's title.

133. Section 31(5) of the old Act was, however, carried over under section 81 of the Trade Marks Act 2002, even though the trade mark owner is free to pursue the assignment or transmission of the trade mark irrespective of the advice in the certificate. The Commissioner has noted since the Trade Marks Act 2002 came into force on August 2003 over 20,000 assignments have been registered, but only one request for a Commissioner's certificate on validity has been received and that was received shortly after the new Act came into force.

134. There appears to be no demand for the Commissioner to issue a certificate of validity under section 81 or a need for this provision to be retained. Even if the Commissioner did issue such a certificate, it would appear to be of little of use, as it has no direct impact in the assignment of trade mark under the Trade Marks Act 2002. Furthermore, the Commissioner's opinion on the certificate as to whether the assignment or transmission is likely to deceive or confuse has no practical implications in respect of preventing third parties seeking to remove a trade mark from the register on these ground after an assignment has taken place.