35.9. Assignment of registered certification trade marks

Certification trade marks can be assigned both before and after registration in the same way that ordinary trade marks may be assigned.  However, there are requirements imposed by sections 180 and 180A of the Act.  

9.1 The owner of a registered certification trade mark may only assign the trade mark with the consent of the Commission (section 180(1)).  The application to the Commission for consent to the assignment must be in accordance with the regulations (section 180(2)).

9.2 The application to the Commission for permission to assign a certification trade mark must:  

• be made by the registered owner of the certification trade mark (reg 16.11(1)(a))
• state the name, address and the address for service of the prospective assignee (reg 16.11(1)(b))
• indicate whether the prospective assignee intends to use the same rules, and if not, what variation is proposed (reg 16.11(1)(d)).  If the assignee intends to vary the rules, a copy of the rules containing the proposed variation must accompany the application.

The application is made to the Commission not the Registrar.

9.3 The Commission is only required to make a final decision on an application to assign a certification trade mark. The Commission is not required to make an initial assessment of the application for public consultation.

However, if an application to assign a certification trade mark involves a change to the rules the full process for assessing certification trade mark rules applies as outlined in Part 35.6 of this Manual (subreg 16.11(2)).

9.4 If the Commission refuses to give consent to the assignment, an application may be made to the Administrative Review Tribunal for a review of the decision (section 180(4)).

9.5 When an application under section 109 to record the assignment of a registered certification trade mark is filed in the Trade Marks Office, it must be accompanied by documentation proving that the Commission consented to the assignment.  If no documentation has been received, the person seeking the assignment to be recorded is advised that no action will be taken to record until the appropriate documentation is provided.  If proof of consent is given, then the application to record assignment is processed in the usual manner.