Trade Mark Assignment
Trade Mark Assignments
A trade mark assignment is a common occurrence when a business is sold, or a group of companies undergoes a reorganisation. When assigned the rights, title, and interest in the trade mark is transferred to the new legal owner, either in its entirety or partially.
Selling and assigning any form of intellectual property is complicated, which is why we wouldn’t recommend you attempt it on your own.
The team at Ward Trade Marks will help you negotiate your assignment agreement to make sure it delivers the outcome you want to achieve.
Assigning a registered trade mark
A registered trade mark must be assigned in writing, and:
- Be signed by, or on behalf of the assignor (i.e. the owner of the trade mark) and witnessed (if signed as a deed)
- Identify the assignor and the assignee (i.e. the business buying the trade mark)
- State the effective date of the assignment
- State the amount of consideration being paid by the assignee
- Contain details of the trade mark being assigned
That all sounds relatively straightforward, but you’d be amazed at the number of errors that creep into DIY assignments. When working with our team, we’ll take the following steps to make sure the assignment process goes smoothly:
- Searches – trade mark searches of the relevant Register and checks on Companies House are made before drafting the assignment to check you own the Intellectual Property (IP) you think you own
- Information check – to make sure the address, company name, etc., are correct and spelt correctly
- Trade mark portfolio – if you have a collection of trade marks, we make sure the property is transferred correctly in each relevant country
- Confidentiality – we respect your privacy at all times. If you wish the details of the assignment to remain confidential, we’ll make sure it stays that way by correctly completing Form TM16 (Application to record a change of ownership) to record the transfer at the UK Intellectual Property Office (UKIPO)
- Stamp duty – we will ensure that any declarations made on the stamp duty payable are legally correct
- Joint applicants – we are careful to make sure the trade marks are correctly assigned with full knowledge of both parties
- Title – we also work with you to ensure the IP is assigned as either full title guarantee or limited title guarantee. This will depend on what rights the seller has.
Once the agreement has been signed and completed by both parties, our team will advise the UK Intellectual Property Office of the change of ownership by notifying them on Form TM16.
Things to consider when assigning your trade mark
When recording or registering the assignment (using Form TM16: Application to record a change of ownership), the UKIPO will need to see a complete chain of title, which can be traced. We can help you with this by ensuring that any changes of name or address of the parties are recorded at the same time or before the assignment recordal takes place, and in the right order.
Also, registration of the assignment of your registered trade mark with the IPO should be recorded within six months of the assignment. Because the IPO keeps a publicly searchable Trade Mark Register, this document must remain current so that third parties have accurate and up to date information on any trade mark.
Any delay in lodging the assignment could lead to:
- Trade mark revocation (Section 46(1)(d) Trade Marks Act 1994)
- A third party from acquiring a conflicting right in good faith after registering their trade mark
- A loss of the costs involved in bringing trade mark infringement proceedings for any infringement that took place before registration of the assignment
- The new trade mark owners not having certain automatic rights that would have been available to the assignor, such as, the right to instigate legal proceedings for infringements that happened before the effective date of the assignment
Don’t risk getting caught out. Our team are ready to help you assign your trade mark.