How to Assign or Transfer a UK Trade Mark

24th January 2018
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How to Assign or Transfer a UK Trade Mark

Assignment of a UK registered trade mark is a way of transferring legal ownership of the trade mark from one person to another. The most common method of transferring UK trade mark ownership is by assignment under UK law.

Trade mark assignment

Section 24(3) of the Trade Marks Act 1994 provides that a registered trade mark must be assigned in writing. Commonly the written document will be called a ‘trade mark assignment’, an ‘intellectual property assignment’ or something similar, but the title of the document will not be crucial. The principal requirement of a valid UK trade mark assignment is that it is embodied in a document signed by or on behalf of the assignor, ie. the owner or the trade mark.

This document must also, amongst other things, identify the assignor and the assignee, state the effective date of the assignment, the amount of consideration being paid by the assignee and of course particulars of the trade mark to be assigned.

Once a trade mark assignment agreement has been executed and completed by the parties, ownership changes affecting the registered trade mark should be notified to the UK Intellectual Property Office using Form TM16. This requirement does not apply where it is an unregistered trade mark changing hands.

Types of Assignment

A trade mark can either be assigned wholly or partially. A partial trademark assignment will limit the new owner’s use of the trade mark 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 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 agreement.

Considerations

Registration of an assignment of a registered trade mark with the IPO should be carried out within six months of the assignment. The IPO keeps a publicly searchable trade mark 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. 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 may be deprived of their costs of bringing trade mark infringement proceedings for any infringement that took place before registration.

Upon assignment, new trade mark 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. The trade mark assignment 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 and intellectual property agreements. Please get in touch for a confidential discussion about anything we have discussed above.

 

Intellectual Property & Technology