How to buy a trade mark

Written by William Miles | December 1, 2022

Trade Marks

A trade mark is a piece of property and, like all other property, it can be bought and sold. In fact a trade mark is one of the most valuable pieces of commercial property that a business can own and so ensuring that acquisition is done properly, is absolutely vital.

Broadly speaking the purchase of a trade mark is a two step process. The first involves the legal assignment with a contract and the second involves the recordal of that assignment at the relevant trade mark registry. This is explained in greater detail below.

Step 1 – Trade Mark Assignment

A trade mark assignment is a legal agreement, but equally trade marks could be sold as part of a wider asset purchase agreement. Either way you should have some form of written agreement which sets out details of the sale (i.e. the assignment) of the trade mark from the Assignor to the Assignee. It’s obviously key that the Assignor is the actual registered owner of the trade mark and this should be checked against the trade mark register. Beyond that, you should ensure that the assignment agreement properly details the trade mark, or trade marks, that are being sold and covers off the wider commercial points such as the sale price and the assignment date.

Once that agreement has been properly executed, the trade mark should have legally transferred from the original owner (the Assignor) to the new owner (the Assignee).

Step 2 – Assignment Recordal

The next step is to record the change of the ownership with the relevant trade mark registries. If you’re assigning a UK trade mark the relevant registry is the UK Intellectual Property Office. The assignment can normally be recorded by filing a simple form however it’s important to flag that different registries have different requirements. For example, in some jurisdictions original assignment agreements need to filed whereas in other jurisdictions, the assignment agreement needs to be notarised or even legalised. Ascertaining the full filing formalities from the outset normally saves a great deal of time and fortunately we can leverage our global network of trade mark representatives to assist with this.

Briffa Comment

The legalities around a trade mark acquisition can seem simple but there are a number of pitfalls to avoid and so getting proper advice is a must (although you would expect us to say that). Fortunately Briffa is on hand to help with the entirety of the trade mark assignment process and so please just email to arrange a free consultation meeting.

Written by Will Miles – Partner

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