48.8. Use by an assignee

The Registrar and the courts have a discretion to recognise the use of an unrecorded assignee as being that of the registered owner if, "...it is reasonable, having regard to the circumstances of the case..."

With respect to the recognition of use of a trade mark by an unrecorded assignee for the purposes of rebuttal of an allegation of non-use, subparagraphs 100(2)(b)(ii) and 100(3)(b)(ii) say that if the Registrar or the court is of the opinion that it is reasonable, "...having regard to the circumstances of the case...", then that use may be recognised as use by the registered owner. This means that the opponent has an onus to satisfy the Registrar, or the courts, of the following:

• the use relied upon should be the same kind of use that the registered owner would have to show to rebut a non-use allegation,
• the assignment of the trade mark, although not recorded on the Register, is a legitimate transfer of rights in the trade mark. This could be shown if the unrecorded assignee becomes registered as the subsequent proprietor,
• the use is in relation to the relevant goods or services or to closely related goods or services, and
• that it is "reasonable" that the use by the assignee is recognised as use by the registered proprietor, having regard to "...all the circumstances of the case".