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 an 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 a little more detail below.
A Trade Mark Assignment is a legal agreement drafted to govern the sale of a trade mark, but equally trade marks could be sold as part of a wider Asset Purchase Agreement (which often includes other intellectual property rights and domain names).
Either way, you should have some form of a written agreement which sets out the sale (known as 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. You should also ensure that the assignment agreement properly details the trade mark or trade marks that are being sold, and covers the wider commercial points such as the sale price and the assignment date.
Once the agreement has been properly executed, the legal ownership of the trade mark will transfer from the assignor to the assignee.
Whilst the legal agreement results in a transfer of title, trade marks are publicly registered rights and so the public register also needs to be updated to reflect the new owner. For example, if you’re assigning a UK trade mark the public register is managed by the UK Intellectual Property Office (UKIPO).
In most jurisdictions, this is a relatively straightforward administrative process that usually requires the submission of the assignment agreement to the relevant registry and the payment of an official fee. However, in some countries, the formalities around an assignment recordal are strict, and only an original notarised and legalised assignment agreement in a certain format will be accepted for a recordal.
As a result, care needs to be taken when organising the sale of an intentional trade mark portfolio to ensure that the correct number of agreements are executed, in the correct way, by the assignor and assignee. Ascertaining the full filing formalities from the outset can save a great deal of time and effort.
The legalities around a trade mark acquisition can seem simple but there are a number of pitfalls to avoid, so getting proper advice is a must (although you would expect us to say that).
Fortunately, the trade mark assignment process is something we have a great deal of experience in. Furthermore, we have a network of agents all over the world who can advise on any local requirements in their jurisdiction – so, wherever the trade mark is registered, we can ensure that it ends up safely in your hands. Just contact us online or by email to find out more.
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