Trade mark owners may assign their trade marks to another person in much the same way as they might assign other property.
Section 24(1) of the Trade Marks Act 1994 Act s24(1) provides that:
"a registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property. It is so transmissible either in connection with the goodwill of a business or independently".
Assigning a Trade Mark
Assignments must be in writing and bear the assignor's signature. Where Community Trade Marks are being assigned, the written assignment must bear the signature of both parties.
Transfer of a trade mark by way of legal assignment does not automatically update the trade mark register. The transfer and the new owner must be registered before the registered proprietor is changed. This is of considerable importance to a new owner as certain actions can only be carried out by a registered proprietor affecting their ability to protect their trademark.
Types of Assignment
Assignment may take several forms and may be partial, relating to particular goods or services or geographical limitations, or can be by way of security, in the same way an interest in land is charged to a lender as security for a debt.
Uses
The reasons for undertaking a legal assignment of a trade mark are several and varied, for example:
- A party wishes to sell its trade mark for value
- A party wishes to contribute assets to a joint venture
- A party wishes to offer its trade mark as security for a debt
If you would like more information on how trade marks can be assigned or other intellectual property matters Rollingsons has experienced lawyers who can help you. For more information please contact James Crighton via e-mail jcrighton@rollingsons.co.uk or by phone on 0207 611 4848.
