Buying a trade mark
Trade marks can be sold and bought just like any other property, this is known as an assignment of trademark. The seller is known as the ‘assignor’ and the buyer is the assignee.
Under section 24 TMA a trade mark can be sold for all the classes or part of the classes in which it is registered or it can be sold in relation to the use of the mark in a particular manner or locality.
The first step in relation to buying a trade mark as with any property is to contact the owner. Once this has been achieved a price needs to be negotiated. For the assignment to be valid the price must include the assignment of the trademark and the goodwill associated with the mark.
Selling a trade mark without the goodwill and underlying assets is known as ‘in gross assignment’ as is not valid. If this is the case neither the assignor nor the buyer will have rights to the mark and the mark will be considered abandoned.
What is to be included as part of the assignment needs to be considered on a case by case basis.
Under section 24(3) TMA an assignment of a registered trade mark, or an assent relating to a registered trade mark, is not effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative.
The final step is to make sure that all records are kept up to date and notify all relevant parties.