Trademark Transfer

A trademark may be sold by means of an agreement transferring the trademark. For a trademark transfer to take effect against third parties, it must be recorded in the register maintained by the Industrial Property Office.

• a trademark transfer is recorded in the trademark register.

• a patent transfer is recorded in the patent register.

• a utility model transfer is recorded in the utility model register.

• a design or industrial design transfer is recorded in the industrial design register.

Transferring a Trademark Step by Step

Trademarks are property that can be bought, sold or passed on, just like other business assets. A transfer, often called an assignment, may happen when a business is sold, when a brand is moved between companies in the same group, or when the owner simply decides to sell the rights to someone else. Handling the process correctly ensures that the new owner can rely on the trademark without uncertainty.

Preparing the Transfer Agreement

The transfer is based on a written agreement between the current owner and the new owner. It should clearly identify the trademark by its registration number, describe whether the transfer covers all or only some of the registered goods and services, and set out the price and payment terms. It is also wise to address whether any existing licences remain in place and who bears the costs of recording the change.

Recording the Change in the Register

Once the agreement has been signed, the transfer should be recorded with the relevant intellectual property office. Until it appears in the register, the new owner may find it difficult to enforce the trademark against third parties or to deal with the office on matters such as renewals. The application usually requires the details of both parties and proof of the transfer.

Points to Check Before You Buy

• That the trademark is validly registered and not about to expire
• Whether there are pending oppositions, disputes or cancellation actions
• Whether the seller has granted licences or other rights to third parties
• That the seller is the registered owner and has authority to sign
• Whether related rights, such as domain names or designs, should be included

Transfers Across Several Countries

If a brand is protected in several jurisdictions, the transfer may need to be recorded separately at each relevant office, and the formal requirements can vary. Coordinating these filings carefully avoids a situation where ownership is updated in one country but not in another.

Whether you are selling a trademark or acquiring one, eTuls can help you prepare the documentation and record the transfer. Contact us to discuss your situation.