3. Commissioner's certificate

The Commissioner may, if requested by either the applicant of a trade mark application or the owner of a registered mark, issue a certificate that states whether or not a proposed assignment or transmission is likely to deceive or confuse.⁶

An application for a Commissioner’s Certificate must be in writing, signed by the person making the request,⁷ and include the following information:⁸

• The name and communication address of the person making the request;
• The name and communication address of the person to whom it is proposed to assign or transmit the application or trade mark;
• If the assignee has an agent, the agent’s name;
• A description or representation of the trade mark to which the proposed assignment or transmission relates;
• Whether the proposed assignment or transmission is full or partial;
• The class or classes that are proposed to be assigned or transmitted;
• The application or registration number of the trade mark;
• Whether it is proposed that the registration of any licensees be cancelled or amended;
• A statement, which must be verified by statutory declaration, if the Commissioner requires it, setting out the circumstances of the proposed assignment or transmission; and
• In the case of the proposed assignment or transmission of only some of the goods or services within a classification, a statement of the goods or services assigned or transmitted.

The Commissioner may also require the person requesting the certificate to provide any additional information or documents that the Commissioner considers necessary.⁹

The Commissioner will, once the requirements have been met, issue a certificate stating whether or not the request for an assignment or transmission is likely to deceive or confuse.

Footnotes

⁶ See section 81 of the Trade Marks Act 2002.

⁷ See regulation 143 of the Trade Marks Regulations 2003.

⁸ See regulation 144 of the Trade Marks Regulations 2003.