An applicant seeking registration of identical or similar trade marks in the same or related classes is required to associate the marks (S.14, Trade Marks Act B.E. 2534, as amended by Trade Marks Act (No.2) B.E. 2543). Associated marks may be assigned or transferred only when all are assigned or transferred together (S.50).
Once marks have been associated, they cannot be dissociated. It is, therefore, important to object at the outset to any order for association that is not properly based. Association does not pose any problem for trade mark owners who are using all the associated marks themselves, or for those who are transferring all the marks to a third party. It does, however, pose a problem for trade mark owners who wish to transfer only some of the associated marks to a third party e.g. in connection with a transfer of part of the business.
Currently, a trade mark owner wishing to transfer only some of the associated marks to a third party has only two options, neither of which is likely to be attractive. He can assign some of the marks to the third party and cancel the remaining associated marks, an option that will not be acceptable where the trade mark owner wishes to continue using the marks. Or he can retain all the associated marks and license some of them to the third party, an option that may not be attractive to the third party - and that will not be available where the parties have agreed on a global assignment.
Proposed amendments to the Trade Marks Act seek to resolve some of these issues. The amendments, which were proposed in September 2006, but have not yet been enacted, are available on the Department of Intellectual Property's website. It is proposed that the current Section 50 should be amended to read: "Associated trade marks may be assigned or transferred by succession only when all of them are assigned or transferred together except where there are special circumstances or it can be proved to the Registrar that such assignment or transfer of the trade marks will not cause the public to be confused or misled as to the owner or the origins of the goods. The Registrar may issue an order to allow for the associated trade mark to be separately assigned or transferred by succession. For such purposes, the Registrar may impose conditions or restrictions as to the method or area of use of the trade marks or any other conditions or restrictions as the Registrar see appropriate."
While it is not clear what would constitute 'special circumstances' or be accepted as adequate proof that assignment of some of the marks will not cause the public to be confused or misled, the proposed amendment does at least introduce the possibility of the separate assignment of associated marks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
