Licensing your Trade Mark

You can give someone else permission to use your trade mark by granting them a licence in your mark. You may grant a licence for pending as well as registered marks. The terms of any licence are entirely a matter between you and the licensee.

For example if a French law firm wanted a licence to call itself Trademarkroom® it would acquire a licence from this practice to use the brand for an annual fee. You may also grant licences to any number of people, to a specified territory and split the classifications or you may grant an exclusive licence, which excludes anybody else, including the proprietor, from using the mark. Much depends on the strength of your brand. Please note whilst it is not a statutory requirement you ought to register the licence with the Patent Office. If you do not then in accordance with s50 of the Trade Marks Act you will not be able to sue for infringement.

Assignment of a trademark

 What is an assignment?

An assignment is the legal transfer of the ownership of a trade mark from one person, or organisation, to another.

What can you assign?

You can assign either a pending mark, i.e. one which is not yet registered (but the assignment does not take effect until the mark becomes registered) or a registered trade mark.

Partial assignment (splitting a mark)

You can partially assign a trade mark so that only some rights in the mark are transferred to a new proprietor. For example, you may wish to assign rights to use the trade mark for use in specific geographical locations, or to assign particular export rights. A sound record, such as a legal agreement ought to be entered into, providing you with at least the elements of security and protection in terms of what exactly is to be assigned, those associated rights and the protection of that part you wish to retain.

How is it done?

The assignment must be recorded in writing in the form of a Deed and must be signed by both the proprietor and purchaser.

The Trade Mark Registry will also require the owner to notify it of the changes, which comprises the completion of formalities including the payment of fees. Both parties to the assignment must complete the Trade Mark Registry formalities. Otherwise the provision of other suitable documentary evidence as proof that the assignment has taken place will need to be lodged.

Stamp Duty

In the UK Stamp Duty is applicable to all assignments that have taken place prior to 28 March 2000 where the assignment does not carry an appropriate certificate of value.

Timescales

In the UK you are required to register the assignment within six months of it taking place. Failure to do so will result in the denial of damages for infringement of the mark, from the date of the assignment to the date of registration with the UK Patent Office.