A trade mark assignment is a legal transaction which transfers ownership in a trade mark from one party to another.
In the absence of an assignment, legal ownership remains with the original proprietor of the trade mark who can enforce the right against third parties. Without it, the transfer of ownership in the trade mark isn’t legally binding.
Types of trade mark assignment
A trade mark assignment must identify the parties involved i.e. the assignor and assignee, the mark(s) being transferred, any consideration being made, and the date in which the assignment becomes effective.
There are two types of assignments in the UK:
- A deed of assignment: This type of assignment requires both parties’ signatures to be witnessed. However, consideration i.e. a payment, isn’t required.
- An assignment agreement: An assignment agreement requires consideration.
Recording the change of ownership
In the UK, once signed and executed, a trade mark assignment must also be recorded with the United Kingdom’s Intellectual Property (‘UKIPO’).
Although it isn’t a statutory requirement to record a trade mark assignment, if the assignment is not recorded within 6 months of the transaction and the mark subsequently becomes infringed, the assignee will not be entitled to an award of costs for any infringing acts which have occurred between this period. That is, unless the court is satisfied that it was not practicable for the recording to have taken place before the end of that period and that an application was made soon after.
Recording a change of ownership with the UKIPO is important for the following reasons:
- Notice to third parties: Ensuring ownership of the mark is up to date on the UK trade marks register is important as it serves as a notice to third parties regarding who is the registered proprietor of that mark. Failing to do so may lead to a third party initiating a cancellation action against the trade mark registration for non-use given the lack of knowledge they will have of the mark’s new registered proprietor.
- Recovering costs: As previously mentioned, if the new proprietor of the mark fails to register the change of ownership with the UKIPO, this could affect an award of costs in the event of a trade mark infringement.
- Enforcing against third parties: The trade marks register must accurately reflect the new registered proprietor for them to initiate opposition or trade mark infringement proceedings against third parties.
Our Intellectual Property and Data Protection team can assist you with drafting, executing and recording a trade mark assignment. If you are interested, please contact ip@stephens-scown.co.uk.
*Disclaimer: This article provides advice based on English and Welsh law.