Original scientific paper
The Role of the Registry in the Transfer of Trademark Based on the Contract
Romana Matanovac Vučković
; Faculty of Law, University of Zagreb, Zagreb, Croatia
Abstract
The first problem in the assessment of the role of the registry in the transfer of trademark based on the contract is connected to the relation of the unregistered and registered trademark in the transfer, in the states that acknowledge the protection to both types of trademarks. If there are different rules on the transfer of these two types of trademarks, such as the case is for example in the United Kingdom, it is possible that one and the same sign after the transfer of the registered trademark without the goodwill belongs to two different persons. Moreover, the unregistered trademark is transferred out of registry, and due to it the rules about double disposition over such types of trademarks can possibly differ from the rules on the double disposition over the registered trademarks.
The second problem in the assessment of the role of the registry in the transfer of the trademark based on the contract is connected to the fact that rules on the role of the registry in the transfer of registered trademarks in individual national regulations are not certain or clear, and are also not detailed. As a consequence of that, various interpretations are possible. Directive on trademark does not contain provisions on the transfer of the trademark or on the role of the registry, because of which the situation in the national trademark regulations of the member states of the European Union is very versatile. This leads to conclusion that a unique rule cannot be made on what is the role of the registry in the transfer of the trademark in relation to the national regulations of individual states, regardless whether they are in the European Union or outside of it. For each individual state it is necessary to study the national regulations in the area of civil and trademark law and to reach the conclusion by interpreting them. The only rule common for all systems is that in none of the named states the registration of transfer is a constituent precondition for the transfer itself. When it comes to the rules of Community, it is important to note that the Community Regulation on trademark contains somewhat more detailed rules of transfer, however still not enough to make any final conclusions. Although there are opposite points of view, it is concluded that in the case of double transfer it is not possible to gain by trust in the completeness of the Community registry.
The third problem in the assessment of the role of the registry in the transfer of the trademark based on the contract comes out of peculiarities of the international registration and the International registry. According to the autonomous international regulations that make the Madrid System, the registration of trademarks is not constituent for transfer. At the same time, rules are missing about the influence of registration of transfer towards third parties. International registry is prima facie proof of the legal status of the international registration. For every transfer of trademark gained based on the international registration national rules of each country, to which the transfer is applied, are applied, but not the national rules about the registry since the national registry does not apply to such trademarks.
Keywords
trademark; transfer of trademark; trademark registry
Hrčak ID:
100057
URI
Publication date:
28.12.2012.
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