How to buy a trade mark

Written by William Miles | September 29, 2022

Intellectual Property

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.

Step 1 – Trade Mark Assignment

A Trade Mark Assignment is a legal agreement drafted to govern then 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 written agreement which sets out the sale (AKA 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 off 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.

Step 2 – Assignment Recordal

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. In most jurisdictions this is a relatively straightforward administrative process, usually requiring 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.

Briffa Comment

In view of some of the formalities around this process it’s highly advisable to get legal advice before buying a trade mark. Fortunately this is an area that Briffa has a great deal of experience in and 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 email to find out more.

Written by Will Miles – Partner

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