Sometimes individuals elect to file trade marks in their own names as opposed to in the name of a company. If that is the case, it is important to stress that such an asset must, like immovable or movable property, be specified in one’s will and appropriately bequeathed to a nominated third party. This will ensure streamlined succession planning, particularly where a trade mark can be a core asset to a business and its affiliated brand value.
Upon the death of the individual (i.e. the trade mark rights holder in this instance), an executor of such estate is appointed, and the deceased’s will is assessed. If a trade mark is bequeathed to a nominated beneficiary, reference to the mark and the value placed on it is included and referenced in the initial/provisional liquidation and distribution account pertaining to the estate. The provisional liquidation and distribution account will then be advertised in the Government Gazette for a period of 21 days and lie open for inspection by the Master of the High Court. Assuming no objections are filed during that advertisement period, the trade mark will be transferred to the nominated beneficiary at the expiry of that advertisement period in most instances.
That is not the end of the process. Like any normal assignment or transfer of ownership of an intellectual property asset such as a trade mark, the transfer of ownership needs to be recorded on the Trade Marks’ Register. If steps are not taken to record the transfer, the trade mark will remain on the Register in the name of deceased person, despite the fact that the transfer has been effected by operation of law. What this process will entail is the nominated beneficiary will have to request that the Executor of the Estate signs a Deed of Assignment on behalf of the deceased so that the recordal of the transfer can be effected by the Registrar of Trade Marks and the Trade Marks’ Register updated.
If the latter step is not taken timeously, difficulties can arise i.e. the beneficiary may not be able to locate the Executor years down the line to sign a Deed of Assignment. Furthermore, if the recordal request is not lodged with the Registrar of Trade Marks within one year from the expiry of the advertisement period i.e. the effective date of the transfer, the beneficiary will have to pay penalty fees for the late lodgement of the recordal request to the Registrar. Another potential risk is that an interested party may attack the validity of the trade mark registration on the grounds that it is an entry wrongly remaining on the Register as it is recorded in the name of a deceased person, or on the basis that it appears to not have been used for a period of more than 2 years since the death of the deceased.
Therefore, we suggest that intellectual property rights that form an important part of one’s business be explicitly included in estate and succession planning initiatives, including if registered in one’s personal name. Furthermore, one must not forget that a transfer of ownership recordal must be effected to avoid potentially invalidating the intellectual property right. Taking all the necessary steps canvassed above, will ensure that such IP rights remain active and maintain their value beyond the death of the original rights holder.