What are the requirements for changing ownership of a trade mark?

As I recently explained, a trade mark is a registered intellectual property right which provides the mark owner with a monopoly right over the registered mark in the goods or services for which it is protected. Being an intellectual property right, a trade mark is an intangible asset that has considerable value and can be sold or licenced to others.

However, difficulty can occur when assessing the correct manner in which a trade mark can change ownership from one legal entity to another. In reality, the process is not so complex but is certainly one that requires close legal attention to ensure that the assignment occurs correctly and without issue.

To change ownership of a trade mark, it is essential that a tailored assignment agreement is drafted which governs the contract and executes the change of ownership. Key aspects of this agreement could include an indemnity and warranties from the previous owner to ensure that the mark does not infringe the rights of another existing party and that the new owner will be protected should such an issue arise. Additionally, the assignment agreement also passes on responsibility to the new owner which may relate to future concerns for which the previous owner need not be worried.

Once a tailored assignment agreement has been validly executed, the mark owners should then record the change of ownership with the relevant intellectual property offices in which the mark is registered. At this point, the new owner should keep in mind that the application will need to be made to each national office.

If you are considering selling your trade marks, you should seek legal advice to ensure that you carry out the correct actions. For expert legal advice, please contact us at info@briffa.com.

Written by Mohammad Khan – Solicitor