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How to Assign or Transfer a UK Trade Mark

Assignment assignment: the transfer of legal or beneficial ownership of... More of a UK registered trade mark trade mark: a symbol, most commonly used in conjunction with... More is a way of transferring legal ownership of the trade mark trade mark: a symbol, most commonly used in conjunction with... More from one person to another. The most common method of transferring UK trade mark trade mark: a symbol, most commonly used in conjunction with... More ownership is by assignment assignment: the transfer of legal or beneficial ownership of... More under UK law.

Trade mark trade mark: a symbol, most commonly used in conjunction with... More assignment assignment: the transfer of legal or beneficial ownership of... More

Section 24(3) of the Trade Marks Act 1994 provides that a registered trade mark trade mark: a symbol, most commonly used in conjunction with... More must be assigned in writing. Commonly the written document will be called a ‘ trade mark trade mark: a symbol, most commonly used in conjunction with... More assignment’, an ‘ intellectual property intellectual property:  a piece of work or a creation by th... More assignment’ or something similar, but the title of the document will not be crucial. The principal requirement of a valid UK trade mark trade mark: a symbol, most commonly used in conjunction with... More assignment assignment: the transfer of legal or beneficial ownership of... More is that it is embodied in a document signed by or on behalf of the assignor, ie. the owner or the trade mark trade mark: a symbol, most commonly used in conjunction with... More .

This document must also, amongst other things, identify the assignor and the assignee, state the effective date of the assignment assignment: the transfer of legal or beneficial ownership of... More , the amount of consideration consideration: in contract law consideration is the term giv... More being paid by the assignee and of course particulars of the trade mark trade mark: a symbol, most commonly used in conjunction with... More to be assigned.

Once a trade mark trade mark: a symbol, most commonly used in conjunction with... More assignment assignment: the transfer of legal or beneficial ownership of... More agreement has been executed and completed by the parties, ownership changes affecting the registered trade mark trade mark: a symbol, most commonly used in conjunction with... More should be notified to the UK Intellectual Property Office using Form TM16 . This requirement does not apply where it is an unregistered trade mark trade mark: a symbol, most commonly used in conjunction with... More changing hands.

Types of Assignment assignment: the transfer of legal or beneficial ownership of... More

A trade mark trade mark: a symbol, most commonly used in conjunction with... More can either be assigned wholly or partially. A partial trademark assignment assignment: the transfer of legal or beneficial ownership of... More will limit the new owner’s use of the trade mark trade mark: a symbol, most commonly used in conjunction with... More often in terms of the goods and services it can be applied to or its general use. In terms of general use, the assignor may stipulate that the trade mark trade mark: a symbol, most commonly used in conjunction with... More may only be used, amongst other things, in a particular manner or a particular territory.

It is worth noting that partial assignments can be fraught with difficulty if the assignor retains ownership in overlapping territories as consumers may not be able to tell the difference between the origins of goods. This can usually be overcome by distinguishing the goods of the assignee, for example, by using different colours. These mechanisms will usually be set out in the assignment assignment: the transfer of legal or beneficial ownership of... More agreement.

Considerations

Registration of an assignment assignment: the transfer of legal or beneficial ownership of... More of a registered trade mark trade mark: a symbol, most commonly used in conjunction with... More with the IPO should be carried out within six months of the assignment assignment: the transfer of legal or beneficial ownership of... More . The IPO keeps a publicly searchable trade mark trade mark: a symbol, most commonly used in conjunction with... More register and it is important that this document remains up to date so third parties can have accurate and up to date information on any trade mark trade mark: a symbol, most commonly used in conjunction with... More . Registration can among other things prevent a third party from acquiring a conflicting right in good faith. Further, unless there is good reason for the delay, the owner of the trade mark trade mark: a symbol, most commonly used in conjunction with... More may be deprived of their costs of bringing trade mark infringement proceedings for any infringement that took place before registration.

Upon assignment assignment: the transfer of legal or beneficial ownership of... More , new trade mark trade mark: a symbol, most commonly used in conjunction with... More owners should be aware that they do not have certain automatic rights that would have vested in the assignor, for example the right to bring legal proceedings for infringements occurring prior to the effective date of the assignment assignment: the transfer of legal or beneficial ownership of... More . The trade mark trade mark: a symbol, most commonly used in conjunction with... More assignment assignment: the transfer of legal or beneficial ownership of... More agreement should therefore expressly transfer rights such as these, which are not transferred by operation of law.

South Bank Legal is a specialist intellectual property law firm and our solicitors frequently advise on and prepare trade mark trade mark: a symbol, most commonly used in conjunction with... More and intellectual property intellectual property:  a piece of work or a creation by th... More agreements. Please get in touch for a confidential discussion about anything we have discussed above.

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What are the formalities for assigning a registered trade mark?

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TRADE MARK ASSIGNMENTS

Are you a business or an individual needing to transfer ownership of your trade mark rights to another party if so, the trade mark team at albright ip is well placed to advise you on the legal requirements to transfer (assign) your registrations and subsequently, to record the transaction at the appropriate national trade mark offices..

After a trademark has been filed or registered, the proprietor can deal with that right just like any other form of property, whether tangible or otherwise. What this means is that if he so wishes, the proprietor can transfer ownership of the right to another party. This can be from the ownership of one or more individuals to a limited company or from one company to another.

When a company’s structure changes in any way, whether it be a change of name or address or the transfer of ownership from one legal entity to another, the transfer should be recorded on the relevant trademark register. It is important to keep the public record up the date and to enable third parties to obtain accurate information about a trademark and contact the proprietor. Importantly, if a transaction is not recorded on the trademark register, it is ineffective against a third party subsequently acquiring, in good faith, a conflicting interest in or under the trademark. In the UK, if the transaction is not entered on the trademark register within six months of the date of the transaction, the proprietor or licensee will not be entitled to damages or an account of profits in infringement proceedings.

A trademark assignment must contain certain elements and these requirements vary between countries. For example, the assignment must be in writing, it must identify the parties to the assignment, i.e. the assignor (the transferor) and the assignee (the transferee) and the Marks to be transferred. Reference must be made to a financial consideration, the transfer of goodwill (if appropriate) and the effective date of the assignment. The assignment document must be executed on behalf of the parties to the assignment.

The transfer of a trademark application or registration can be whole or partial in relation to all or some of the registered goods or services or in relation to certain countries.

If you would like further information, please email us directly  here  or call  +44 (0) 1242 691 801   to speak to a qualified British and European Trade Mark attorney.

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Recordal of assignments UKIPO, EUIPO and EPO Trade Marks

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Documents required for recording assignments at the United Kingdom Intellectual Property Office

Recordal of assignments of UK Trade Marks The assignment document transfers legal ownership of the trade mark from one legal entity to another. Trade Marks Form TM16 To file an application of change to record a change of ownership, use form   TM16. Form TM16 requires the following details: - trade mark number(s) - the full name of the current registered owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document The filing of form TM16 at the UKIPO incurs an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Trade Marks Form TM16P In the case of filing to record a partial assignment of goods and/or services, form TM16P should be completed. Form TM16P requires the following details: - trade mark number(s), - the full name of the current registered owner(s), - the full name and address of the new owner(s), - method of transfer (in this case assignment), - the date of assignment, which is the date on the assignment document - the list of the goods and services which are being assigned The filing of form TM16P at the UKIPO has an official fee of £50. United Kingdom stamp duty tax is not payable if the assignment relates to a registered trade mark only, or a registered trade mark plus goodwill only. Document inclusion: Although it is not mandatory to include a copy of the assignment document for filing at the trade marks registry, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy of the assignment document will suffice.

Recordal of assignments of UK Patents The assignment of a UK patent or application transfers legal ownership of the patent/application from one legal entity to another. Patents Form PF21 To file an application of change to record a change of ownership can be done using form PF21. Form PF21 requires the following information: - patent application or patent numbers - the full name of the current registered owner(s) - the full name and address of the new owner(s) - the method of transfer (in this case, assignment) - the date of assignment, which is the date on the assignment document The filing of form PF21 at the UKIPO incurs an official fee of £50. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice. A scanned electronic copy will suffice. The Patent Office may require further evidence of the transaction if the circumstances warrant it.

Recordal of assignments of UK Registered Designs The assignment of a UK registered design transfers ownership of the design from one legal entity to another. Designs Form DF12A To file an application of change to record a change of ownership is done using form DF12A. Form DF12A requires the following information: - registered design application number / registered design number - the full name of the current registered design owner(s) - the full name and address of the new owner(s) - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document. The filing of form DF12A does not require payment of an official fee. Document inclusion: Although it is not mandatory to include a copy of the assignment document, we recommend including a copy as good practice to ensure that the transfer has occurred. A scanned electronic copy will suffice.

Recordal of assignments at European Union intellectual property office (EUIPO)

Recordal of assignments of EU Trade Marks The assignment of an EU registered trade mark transfers legal ownership of the trade mark from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered trade mark application number / registered trade mark number - the full name of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document If both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signs the request verifies that the transfer is done on behalf of both parties. However, providing documentary evidence in the form of a copy of the assignment document is good practice. In all other cases, applications for recordal must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation of the assignment document is not necessary unless requested by the EUIPO. Legalisation of documents is not necessary. Currently, there is no official fee for the recordal of a transfer of rights at the EUIPO unless there is only a partial transfer for some goods or services only, which incurs an official fee.

Recordal of assignments of Registered Community Designs The assignment of a registered Community design transfers legal ownership of the registered rights in the design from one legal entity to another. The request to record the assignment should be filed at the EUIPO. When filing a request, it should be made on a covering letter and uploaded electronically with a scanned electronic copy of the assignment. The upload should be done via the Actions and Communications part of the EUIPO register extract. Information needed: - registered Community design application number / registered Community design number - the full name and address of the current owner(s) - nationality of the current owner - the full name and address of the new owner(s) - nationality of the new owner - method of transfer (in this case assignment) - the date of assignment, which is the date on the assignment document

Where both parties to the transfer have the same legal representative, there is no requirement to send documentary evidence of the transfer (assignment document) as the representative who signed the request verifies that this is done on behalf of both parties. However, providing documentary evidence in the form of a copy of this document is good practice. In all other cases, recordal applications must be accompanied by a signed declaration and evidence of transfer from both parties. Where the nationality of the current or new owner is not provided, the EUIPO will assume that the nationality of the owner is the same as the country of the address given. Notarisation is not necessary unless requested by the EUIPO. Legalisation is not necessary. The official fee for recording the assignment is €200 per design.

Recordal of assignments at the European patent office European Patents and applications The assignment document transfers ownership of the European patent or patent application from one legal entity to another. The request to record the assignment needs to be filed at the EPO using form 5050 or by writing a covering letter to the EPO requesting they action the recordal of the assignment based on the covering letter. The covering letter must include: • Name and address of the current proprietor • Name and address of the new proprietor • Date of the assignment Any kind of written evidence suitable for proving the transfer of ownership is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer. Art. 72 EPC requires that for an assignment, the signatures of the parties appear on the documents submitted as evidence of the transfer. In all cases, an indication of the signatory’s entitlement to sign, e.g. his/her position within the legal entity where the entitlement to sign results directly from such a position, is to be given. The EPO reserves the right to request documentary proof of the signatory’s authority to sign if the circumstances of a particular case necessitate this. Where the entitlement results from a special authorisation, this authorisation (a copy thereof, which need not be certified) has to be submitted in every case. In particular, the EPO will examine whether the signatory is empowered to enter into a legally binding contract on behalf of the legal entity. Notarisation is not required unless requested by the European Patent Office. The European Patent Office does not require legalisation of documents. There is an official fee cost for recording a transfer at the EPO. This is official fee “022 Registration of transfer”, and is €105.

If you wish to record an assignment of any of the above rights, then please contact:

Luke Franks -  [email protected] Robert Franks –  [email protected]

Notice: whilst the above information is believed to be correct at the time of writing, requirements and procedures can change. The above should not be relied upon as definitive legal advice.

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• 1. Assignment and licensing of trade marks
• 2. Commercial considerations
• 3. Formalities for assignments
• 4. Formalities for licences

Assignment and licensing of trade marks

UK registered trade marks may be assigned for some or all of the goods or services covered by the registration, or in relation to use of the mark in a particular manner or locality.

EUTMs can be assigned in relation to some or all of the goods or services for which they are registered, but cannot be the subject of a partial assignment in respect of specific territories within the EU, as an EUTM as an object of property must be dealt with in its entirety.

A UK registered mark can be licensed in relation to all, or just some, of the goods or services for which it is registered. The licence can be limited to use of the mark in a particular manner or a particular locality. Similarly, an EUTM can be licensed for some or all of the goods or services for which it is registered, and for either the whole or part of the EU.

A contractual obligation to transfer a business is to be taken to include an obligation to transfer any registered trade mark, except where there is agreement to the contrary or it is clear in all the circumstances that this presumption should not apply.

Commercial considerations

Where, e.g., a business does not have the facility to manufacture and distribute products itself, has insufficient resources to meet the necessary costs of an advertising programme for a particular product or service, or does not have an overseas presence in a particular territory, it can make good commercial sense to allow further exploitation by way of licensing to third parties with the relevant expertise or resources.

On the other hand, an owner who no longer wishes to retain its rights in a trade mark may decide to sell the mark. For example, a business which intends to withdraw from a specific product market may wish to free itself of the ongoing costs of maintaining registration of the trade marks which relate solely to the discontinued products, while recouping the costs of acquiring and maintaining the registrations. In addition, a company which intends to sell part of its business where certain trade marks are integral to the value of the business will either have to accept a significantly decreased price or include the marks in the assets sold.

An outright sale will realise an immediate lump sum and will eliminate the administrative burden and expense of maintaining the marks. By contrast, a licence is more likely to mean that the financial return is spread over the duration of the licence in the form of royalties, with the owner retaining primary responsibility for maintaining the registrations and the integrity of the brand. In particular, the owner must protect the goodwill in, and reputation and value of its mark by controlling the licensee's use of the mark. It will need to impose conditions limiting and regulating that use: for example, by specifying the quality of the products on which the mark is used, and retaining the right to approve the products and their promotion and distribution. If the marks have not been well managed during the licence period, this will significantly reduce the value of those marks to the owner, either for their own use or as assets to be licensed once more.

Formalities for assignments

To be effective, an assignment of a UK registered trade mark (or application) must be in writing and signed by the assignor. An assignment of an EUTM registration or application must be signed by the assignor and the assignee.

In transactions which involve the transfer of trade marks in a number of countries, it is possible either for the parties to execute a global assignment which covers all the trade marks being transferred or to execute individual assignments for each. Where a global assignment is used, this will frequently need to be supplemented by further confirmatory documents in forms prescribed by (and, therefore, acceptable to) the registries in the countries in which the marks are registered.

In the UK, assignments are registrable transactions, but there is no statutory requirement to register them. However, it is desirable for an assignee to ensure that the transaction is recorded, since it will otherwise be ineffective against a third party acquiring a conflicting interest in the mark. In addition, if an assignment is not registered within six months of the date of the transaction, the assignee has no right to its costs relating to any infringements occurring in the period from the date of the transaction to the date of registration of the assignment.

It is also possible to register the assignment of an EUTM.

Formalities for licences

To be legally effective, a licence of a UK-registered mark must be in writing and signed by the licensor. There are no such required formalities for the licence of an EUTM.

Although licences, like assignments, are registrable transactions, there is no statutory requirement that they must be registered. As with trade mark assignments, there are drawbacks to not doing so, and these mirror those for assignments. For licensees, registration provides a statutory right (in the absence of any contrary agreement) to bring infringement proceedings in default of an action by the registered owner.

Similar provisions are in place for EUTMs.

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