Assignmentassignment: the transfer of legal or beneficial ownership of... More of a UK registered trade marktrade mark: a symbol, most commonly used in conjunction with... More is a way of transferring legal ownership of the trade marktrade mark: a symbol, most commonly used in conjunction with... More from one person to another. The most common method of transferring UK trade marktrade mark: a symbol, most commonly used in conjunction with... More ownership is by assignmentassignment: the transfer of legal or beneficial ownership of... More under UK law.
Trade marktrade mark: a symbol, most commonly used in conjunction with... More assignmentassignment: the transfer of legal or beneficial ownership of... More
Section 24(3) of the Trade Marks Act 1994 provides that a registered trade marktrade mark: a symbol, most commonly used in conjunction with... More must be assigned in writing. Commonly the written document will be called a ‘trade marktrade mark: a symbol, most commonly used in conjunction with... More assignment’, an ‘intellectual propertyintellectual 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 marktrade mark: a symbol, most commonly used in conjunction with... More assignmentassignment: 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 marktrade 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 assignmentassignment: the transfer of legal or beneficial ownership of... More, the amount of considerationconsideration: in contract law consideration is the term giv... More being paid by the assignee and of course particulars of the trade marktrade mark: a symbol, most commonly used in conjunction with... More to be assigned.
Once a trade marktrade mark: a symbol, most commonly used in conjunction with... More assignmentassignment: the transfer of legal or beneficial ownership of... More agreement has been executed and completed by the parties, ownership changes affecting the registered trade marktrade 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 marktrade mark: a symbol, most commonly used in conjunction with... More changing hands.
Types of Assignmentassignment: the transfer of legal or beneficial ownership of... More
A trade marktrade mark: a symbol, most commonly used in conjunction with... More can either be assigned wholly or partially. A partial trademark assignmentassignment: the transfer of legal or beneficial ownership of... More will limit the new owner’s use of the trade marktrade 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 marktrade 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 assignmentassignment: the transfer of legal or beneficial ownership of... More agreement.
Considerations
Registration of an assignmentassignment: the transfer of legal or beneficial ownership of... More of a registered trade marktrade mark: a symbol, most commonly used in conjunction with... More with the IPO should be carried out within six months of the assignmentassignment: the transfer of legal or beneficial ownership of... More. The IPO keeps a publicly searchable trade marktrade 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 marktrade 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 marktrade 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 assignmentassignment: the transfer of legal or beneficial ownership of... More, new trade marktrade 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 assignmentassignment: the transfer of legal or beneficial ownership of... More. The trade marktrade mark: a symbol, most commonly used in conjunction with... More assignmentassignment: 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 marktrade mark: a symbol, most commonly used in conjunction with... More and intellectual propertyintellectual 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.