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Buying, selling, and transferring trade marks

By Sarah Chatterley.

One of the things which is sometimes forgotten, especially within the larger picture of an acquisition or sale of a company as a whole, is that the IP should be transferred as part of, or by an accompanying agreement if the new company owner is to have the benefit of the IP. It is often only discovered that IP is not recorded in the correct ownership when it is needed to stop someone else from using the mark, patent or design. 

More company sale agreements now include a clause specifically relating to intellectual property. In some cases, all that is then needed is a confirmatory assignment document, signed by both the seller (assignor) and the buyer (assignee), to officially record the transfer on the relevant Trade Mark Register. There are several reasons for having simple side agreements executed alongside the main agreement:

  • If the document will be put on public record when the transfer recordal request is filed at the Trade Mark Registry, all the details it contains may be made public knowledge – you may wish to keep other elements of your agreement confidential, including the amount of money you have paid for a business and/or its IP.
  • It is much simpler to have the recordal filed overseas in this format since translations, if required, will be much shorter and therefore cheaper.
  • Certain countries have specific requirements for the recordal of trade mark assignments. For example, in some cases a document must be submitted in duplicate or triplicate, must show a realistic or nominal value for the trade mark, or signatures must be witnessed. These requirements and standard wordings are not consistent for all countries and can be tailored to fit particular business requirements per territory. One document may not cover each specific country’s requirements if a bundle of foreign trade marks are being transferred.
  • Some territories take longer to record a transfer than others – having a bundle of documents means you can record the transfer independently in each country.
  • Special conditions apply regarding international (Madrid) trade mark registrations – these can be recorded all in one place.

Talk to us about what you need to do about assigning and recording the transfer of your IP – before you do it, if possible.

If you have already acquired some IP then we can also help you record your ownership on the specific Trade Mark Registers. As we said above, particular documents, with specific execution requirements or wording will often be needed, sometimes with additional documents such as powers of attorney, to enable us to instruct a local trade mark attorney to act on your behalf in a particular territory. We can help you to fulfil these requirements.

This news item may contain information of general interest about current legal issues, but does not contain legal advice.