Trademark Assignment Agreement for the United Kingdom

Trademark Assignment Agreement Template for England and Wales

A legal document governed by English and Welsh law that facilitates the transfer of ownership rights in one or more trademarks from one party (the assignor) to another (the assignee). The agreement includes details of the marks being transferred, warranties of ownership, and provisions for the registration of the change in ownership with relevant intellectual property offices. It operates under the Trade Marks Act 1994 and ensures a clear chain of title for trademark ownership.

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What is a Trademark Assignment Agreement?

A Trademark Assignment Agreement is used when a business needs to transfer ownership of its trademark rights to another entity. This might occur during company acquisitions, brand sales, or corporate restructuring. The agreement, governed by English and Welsh law, must comply with the Trade Marks Act 1994 and includes specific details about the marks being transferred, warranties about ownership and validity, and provisions for registering the transfer with the UK Intellectual Property Office. It's essential for maintaining clear ownership records and protecting valuable intellectual property rights.

What sections should be included in a Trademark Assignment Agreement?

1. Parties: Identification of assignor and assignee with full legal names and addresses

2. Background: Context of the assignment, ownership history, and reason for transfer

3. Definitions: Key terms including the Trademarks, Effective Date, and Territory

4. Assignment: Core provision transferring ownership of the trademark(s)

5. Warranties: Assignor's warranties regarding ownership and right to transfer

6. Further Assurance: Obligation to execute additional documents if needed

7. Governing Law: Specification of English and Welsh law as governing law

What sections are optional to include in a Trademark Assignment Agreement?

1. Consideration: Details of payment, used when assignment is not for nominal consideration

2. Goodwill: Explicit transfer of associated goodwill, if applicable

3. Confidentiality: If terms of assignment should remain confidential

4. Tax Provisions: When specific tax treatment needs to be addressed

What schedules should be included in a Trademark Assignment Agreement?

1. Schedule 1 - Trademark Details: List of trademarks being assigned including registration numbers

2. Schedule 2 - Assignment Form: Form TM16 for UK IPO filing

3. Schedule 3 - Existing Agreements: Optional: List of relevant licenses or agreements affecting the marks

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

England and Wales

Publisher

Genie AI

Cost

Free to use
Industries

Trade Marks Act 1994: Principal UK legislation governing trademarks, particularly sections 24-27 which cover assignment and transmission of trademarks, including requirements for valid assignments

Trade Marks Rules 2008: Secondary legislation detailing procedural requirements for recording trademark assignments, including specific forms and filing requirements

Law of Property (Miscellaneous Provisions) Act 1989: Governs requirements for written documents and execution formalities in property transactions, including intellectual property

Contracts (Rights of Third Parties) Act 1999: Legislation governing third party rights in contracts, relevant for determining if third parties should have enforcement rights in the assignment

EU Trade Mark Regulation: European legislation relevant if the trademark has EU-wide protection or implications

Madrid Protocol: International treaty system for trademark registration, relevant if the assigned marks include international registrations

TRIPS Agreement: International agreement setting minimum standards for intellectual property regulation, providing framework for international IP protection

Common Law Contract Principles: Fundamental principles including offer, acceptance, consideration, intention to create legal relations, and capacity to contract

Competition Law: Regulations governing anti-competitive practices, relevant for ensuring the assignment doesn't breach competition rules

Tax Legislation: Various tax laws and regulations affecting the transfer of intellectual property assets

Data Protection Laws: Regulations concerning personal data protection if the trademark assignment involves transfer of personal data

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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