Assign or Licence a Trade Mark.

Trade marks may be sold, known as an assignment or licensed for some or all of the goods or services covered by the registration, or in relation to use of the mark in a particular manner or locality.

Assignment of a trade mark.

A trade mark assignment needs to be in writing and needs to be signed be the assignor to be effective.  Your trade mark will then be able to be sold or transferred.

Assignment of a trade mark in international countries.

If an assignment of a trade mark is to be carried out in a number of countries, it is either possible for the parties to execute a global assignment which covers all the trade marks being transferred or execute individual assignments for each.

Global assignments for trade marks can be costly and time consuming as they have to be accompanied by further confirmatory assignments in forms prescribed by and acceptable to the registries in the countries in which the marks are registered.  Global assignments should therefore contain a ‘further assurance’ provision.

Registration of the assignment of a trade mark

In the UK there is no statutory requirement to register a trade mark assignment.  However it makes sense to have it recorded otherwise it will be ineffective against a third party acquiring a conflict of interest in the mark. A third party will not know who to contact in the event of communication.

There is no stamp duty payable on a trade mark assignment

Licences.

To be legally effective a trade mark licence must be in writing and signed by the licensor.

Registration of a licence transaction

Like trade mark assignments, there is no statutory requirement to register the licence transaction.  However as above there are drawbacks for not doing so. For licensees, registration provides a statutory right in the absence of any contrary agreement to bring infringement proceedings in default of an action by the registered proprietor of the trade mark.