Trade mark assignment agreement

This document transfers ownership of trade marks from one party to another. It is drafted as a deed, which means it binds whether the assignee pays a full price, a nominal pound or nothing at all. That matters in group reorganisations and on the transfer of marks from a founder to their company, where there is often no real price being paid.

Because it is a deed, execution is formal. Each signature must be witnessed, or a company may sign by two directors, or by one director and the company secretary. Date the deed only once both parties have signed.

The recordal deadline

The assignee should record the assignment at the UK Intellectual Property Office on Form TM16 as soon as it is signed. Until it is recorded the assignment does not bind someone who later acquires a conflicting interest without knowing of it. There is also a costs consequence: if recordal is applied for more than six months after the assignment, costs for infringements committed in the meantime may not be recoverable. Six months sounds generous and is routinely missed.

What the document covers

The assignment itself, including unregistered marks, which can only pass together with the goodwill of the business that uses them, so clause 2 provides for that goodwill expressly. Consideration, with two options at clause 3, a nominal sum or a stated price, one to keep and one to delete. Recordal at the UKIPO. Further assurance and a power of attorney, so that the assignee can complete the formalities if the assignor has moved on or stopped responding. The assignor's warranties on ownership and encumbrances, the assignee's warranty, indemnities, liability, confidentiality and the usual general provisions.

Schedule 1 is the record

List every mark with its registration or application number, its classes, its status and its next renewal or filing date. Part 2 covers unregistered marks. Part 3 records any existing licences, which survive the assignment and which the assignee needs to know about before rather than after completion.

When to take advice

Where the marks are valuable, registered outside the United Kingdom, already licensed to someone else, or used as security for a loan, have a solicitor review the deed before it is signed. Foreign registrations do not transfer under an English law deed alone, and a charge over a mark usually needs the lender's consent to any assignment.