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 be 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.
Trade Mark Reviews
One of the greatest assets of any brand is it’s IP. Working with Rachael is a joy – her professional insight, experience and clear (no jargon) communication enables you to make informed decisions about how and where you protect your brand. Whatever stage of business/brand development you are currently at, I’d recommend speaking with Rachael, to find out what you can protect and the best ways to achieve a robust solution, that’s fit for purpose.
Extremely happy with the professional service provided by Ward Trade Marks in obtaining our trade mark. Their advice and support made the process stress free and I would not hesitate to recommend them to others.
Rachael is extremely personable and professional. She has handled all of our trade marking adventures over the last few years with success and efficiency. Highly recommended.
Rachael worked with my daughter and me to trade mark our company name, Arya Candles. She is a true professional and a delight to work with. Highly knowledgeable and nothing was ever too much trouble.
Rachael Ward provided us with excellent service over a period of over 3 years (2014-2017). Rachael is a very practical and pragmatic trade mark attorney: she gets quickly to the heart of a problem and is extremely efficient in her work. She has a good depth of knowledge about trade mark law, but never allows this to get in the way of clear-sighted, practical advice. I would strongly recommend any business to use Rachael Ward and Ward Trade Mark Services on trade mark issues.
As a marketing and design company it has been in the back of my mind since I launched TukTuk Creative Marketing to trademark the brand. There have been a few local companies who have recently had to change their name and branding because another company has objected. I love our company name, and it brings to life what I wanted to do when I started the company – taking brands on an inspiring journey, and what better way than on a TukTuk. To lose the name now or in the future would be crushing. Rachel has been amazing from the start, and I whole heartily trust her to set up the Trademark and follow up with any issues that occur along the way.
Rachael is very efficient and productive trademark law expert which helped us to register copyrights for few our brands. She did a good research and gave us useful advices. Their fees are very reasonable. We were happy working with her.
I approached Rachael after working unsuccessfully with two other trade mark companies. Rachael was a joy to work with. She explained everything very clearly and was very open and upfront with her pricing. I was kept fully updated of the progress of my application. I am pleased to say I have now got my EU trademark, thanks to Rachael.
Our initial consultation with Rachael at Ward Trade Marks reinforced our focus regarding our branding and Company marketing for the future. Once BoMoJo was officially registered and published it enabled us to apply and acquire @BoMoJo as a Twitter username from an account that had been dormant for over 6 years. Twitter processed our request, swiftly and promptly and all was completed within a week, transferring our followers from @BoMoJoProd to @BoMoJo. Quite simply a first-class service is what you can expect from Rachael, who is extremely efficient, using her experience, knowledge and expertise to deliver your Trade Mark requirements. Rachael is thorough and precise. Cristina and Barry have absolutely no hesitation in highly recommending Ward Trade Marks.
Having been recommended to us by a trusted friend, we engaged Rachael to acquire a trade mark for our new venture, and thank goodness we did. What we thought would be a simple application, met with objections from a company in the US, however Rachael’s sound, professional advice, steered us through the negotiations to a successful conclusion, TM approved! I would not hesitate to recommend Rachael to anyone who is not an expert in such matters, (and the bill was very reasonable too!)
Rachael was a business partner to Mars trade marks team advising on all product segments. Rachael applies a compelling mix of trade mark and commercial knowledge and experience to her advice. She is a clear communicator and client-focus is always number 1. A true collaborator and pleasure to work with.
As a branding agency, we believe that it’s critical for businesses to make sensible decisions about protecting their entities. We recommend using Ward Trade marks to our clients, as they fully comprehend the minutiae of the whole process and get it done in a fuss free, cost effective way, but most importantly, they make sure your brand assets are fully protected, which can alleviate a lot of potential heartache later on.
As a charity The Woodbridge Tide Mill Museum was hesitant to enter the world of trade mark protection for fear of endless paperwork and high costs. We were recommended to speak to Ward Trade Marks and it proved to be good advice. Bill and Rachael provided a fast, well-explained and cost-effective service so that the whole matter was resolved within a couple of months. No stress, no jargon just common sense, knowledge and experience. Highly recommended.
Ward Trade Marks were fantastic to deal with, they explained everything in an understandable way which for the layman made it easy to comprehend and have efficiently seen our application through from initial discussion to fruition. As a charity our name means everything and we wanted to protect it.
Friendly, knowledgeable people, who I feel we can trust with all of our Trademark concerns / issues. The company is available when I need them (answer my queries out of regular hours – not something I can expect but something I really value and appreciate) and I feel ‘goes the extra mile’.
-Loved your service. I thought the service was very friendly and professional and couldn’t ask for anything more really.
Great attention to detail, good updates right through the process – we were new to the trademarking process, you supported us through the journey. So from our perspective you fully met our requirement.
The team @ Ward Trade Marks and especially Rachael have been instrumental in supporting and developing the IP @ Crude Coffee. As a new startup business I cannot recommend highly enough the help, guidance and IP strategy that Rachael and the team have created for us. I would not hesitate to recommend them to any other start-ups or established businesses looking to create, develop and protect your IP!