Proposed Use by a Company To Be Formed

In one line

A mark may be registered by somebody who will never use it himself, where a company is about to be formed to use it or a registered user is intended, but the company must be put on the register within the period allowed.

In the wording a student can write in an exam: section 46(1) provides that no application shall be refused, nor permission withheld, on the ground only that the applicant does not use or propose to use the mark, if the Registrar is satisfied that (a) a company is about to be formed and registered and the applicant intends to assign the mark to that company with a view to its use by the company, or (b) the proprietor intends it to be used by a person as a registered user after registration; section 46(2) adapts section 47(1)(a) accordingly; section 46(3) allows security for costs; and section 46(4) provides that where the applicant relied on an intention to assign to a company, the registration shall cease to have effect unless the company is registered as proprietor within the prescribed period or a further period not exceeding six months.

Why the section exists

Section 18(1) requires the applicant to be a person claiming to be the proprietor of a mark "used or proposed to be used by him". Chapter 220 works those words.

Two ordinary commercial arrangements do not fit them. A promoter clears a mark before the company that will trade under it exists. And a group holding company registers a mark that its operating subsidiaries will use.

Section 46 makes both lawful, and it does so by removing one particular ground of refusal, not by creating a new right.

Sub-section (1): the two cases

"No application for the registration of a trade mark in respect of any goods or services shall be refused nor shall permission for such registration be withheld, ON THE GROUND ONLY that it appears that the applicant does not use or propose to use the trade mark, if the Registrar is satisfied that:

• (a) a company is about to be formed and registered under the Companies Act, 1956 and the applicant intends to assign the trade mark to that company with a view to the use thereof in relation to those goods or services by the company; or
• (b) the proprietor intends it to be used by a person as a registered user after the registration of the trade mark."

Three points.

One: "on the ground only". Every other ground of refusal remains. The mark must still clear sections 9, 11, 13 and 14.

Two: the Registrar must be SATISFIED. The applicant must show the intention, and in case (a) that a company is about to be formed.