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692.   Powers of, and restrictions on, assignment and transmission

Revised Laws of Saint Lucia (2022)

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CHAPTER 4
ASSIGNMENT AND RENEWAL

Assignment and Transmission

692.   Powers of, and restrictions on, assignment and transmission

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    (1)   Notwithstanding any rule of law or equity to the contrary, a registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible either in connection with the goodwill of a business or not.

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    (2)   A registered trade mark shall be, and shall be deemed always to have been, assignable and transmissible in respect either of all the goods or services in respect of which it is registered, or was registered, as the case may be, or of some (but not all) of those goods or services.

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    (3)   The provisions of the 2 foregoing paragraphs shall have effect in the case of an unregistered trade mark used in relation to any goods or services as they have effect in the case of a registered trade mark registered in respect of any goods or services, if at the time of the assignment or transmission of the unregistered trade mark it is or was used in the same business as a registered trade mark, and if it is or was assigned or transmitted at the same time and to the same person as that registered trade mark and in respect of goods or services all of which are goods or services in relation to which the unregistered trade mark is or was used in that business and in respect of which that registered trade mark is or was assigned or transmitted.

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    (4)   Notwithstanding anything in the foregoing paragraphs, a trade mark shall not be, or be deemed to have been, assignable or transmissible in a case in which as a result of an assignment or transmission there would in the circumstances subsist, or have subsisted, whether under the common law or by registration, exclusive rights in more than one of the persons concerned to the use, in relation to the same goods or services or description of goods or services, of trade marks nearly resembling each other or of identical trade marks, if, having regard to the similarity of the goods or services and of the trade marks, the use of the trade marks in exercise of those rights would be, or have been, likely to deceive or cause confusion:

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    Provided that, where a trade mark is or, has been, assigned or transmitted in such a case as aforesaid, the assignment or transmission shall not be deemed to be, or to have been, invalid under this paragraph if the exclusive rights subsisting as a result thereof in the persons concerned respectively are, or were, having regard to limitations imposed thereon, such as not to be exercisable by 2 or more of those persons in relation to the goods or services to be sold, or otherwise traded in, within Saint Lucia (otherwise than for export therefrom) or in relation to goods or services to be exported to the same market outside Saint Lucia.

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    (5)   The proprietor of a registered trade mark who proposes to assign it in respect of any goods or services in respect of which it is registered may submit to the Registrar in the prescribed manner a statement of case setting out the circumstances, and the Registrar may issue to him or her a certificate stating whether, having regard to the similarity of the goods or services and of the trade marks referred to in the case, the proposed assignment of the first-mentioned trade mark would or would not be invalid under the last foregoing paragraph, and a certificate so issued shall, subject to the provisions of this article as to appeal and unless it is shown that the certificate was obtained by fraud or misrepresentation, be conclusive as to the validity or invalidity under the last foregoing paragraph of the assignment in so far as such validity or invalidity depends upon the facts set out in the case, but, as regards a certificate in favour of validity, only if application for the registration under article 716 of this Code of the title of the person becoming entitled is made within 6 months from the date on which the certificate is issued.

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    (6)   Notwithstanding anything in paragraphs (1) to (3) of this article, a trade mark shall not, on or after the coming into operation of this article, be assignable or transmissible in a case in which as a result of an assignment or transmission there would in the circumstances subsist, whether under the common law or by registration, an exclusive right in one of the persons concerned to the use of the trade mark limited to use in relation to goods or services to be sold, or otherwise traded in, in a place or places in Saint Lucia, and an exclusive right in another of those persons to the use of a trade mark nearly resembling the first-mentioned trade mark or of an identical trade mark in relation to the same goods or description of goods or services limited to use in relation to goods or services to be sold, or otherwise traded in, in another place or other places in Saint Lucia:

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    Provided that, on application in the prescribed manner by the proprietor of a trade mark who proposes to assign it, or of a person who claims that a trade mark has been transmitted to him or her to a predecessor in title of his or her on or after the coming into operation of this article, in any such case, the Registrar, if he or she is satisfied that in all the circumstances the use of the trade marks in exercise of the said rights would not be contrary to the public interest, may approve the assignment or transmission, and an assignment or transmission so approved shall not be deemed to be, or to have been, invalid under this paragraph or under paragraph (4) of this article, so, however, that in the case of a registered trade mark this provision shall not have effect unless application for the registration under paragraph (1) of article 716 of this Code of the title of the person becoming entitled is made within 6 months from the date on which the approval is given or, in the case of a transmission, was made before that date.

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    (7)   Where an assignment in respect of any goods or services of a trade mark that is at the time of the assignment used in a business in those goods or services is made, on or after the coming into operation of this article, otherwise than in connection with the goodwill of that business, the assignment shall not take effect until the following requirements have been satisfied, that is to say, the assignee must, not later than the expiration of 6 months from the date on which the assignment is made or within such extended period, if any, as the Registrar may allow, apply to him or her for directions with respect to the advertisement of the assignment, and must advertise it in such form and manner and within such period as the Registrar may direct.

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    (8)   Any decision of the Registrar under this article shall be subject to appeal to the Court.

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    (Amended by Act 14 of 1989)

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