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.