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Selling a trade mark

Written by Michael Coyle on 25 April 2014

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Community Trade Marks

Council Regulation 207/2009 ("the Regulation") covers assignments of Community trade marks (CTMs) from a general point of view.

Article 17(3) provides:
"...an assignment of the Community trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void".

In other words at EU level a valid assignment: (1) must be in writing; and (2) signed by both parties unless the assignment is made by court order.

UK Trade Marks

Section 24(1) of the Trade Marks Act 1994 ("the Act") reads:

"A registered trade mark is transmissible by assignment, testamentary disposition [a will] 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."

Section 24(1) does not deal with the formalities of the assignment, but states how a trade mark may be “transmitted”.

Extent of assignment

Community Trade Marks

Article 17(1) provides that:

"A Community trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered."

A trade mark owner may carry out what is called a partial assignment in the sense of assigning the CTM in relation to part of the goods or services.

The Regulation does not appear to allow the CTM to be assigned in relation to a particular geographical location. The position is different at UK level.

UK Trade Marks
Section 24(2) of the Act provides for geographical locations and partial assignments of goods/services that section says this:
"An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply-
(a) in relation to some but not all of the goods or services for which the trade mark is registered, or
(b) in relation to use of the trade mark in a particular manner or a particular locality."
It is perhaps surprising that the geographical assignment option is not included at EU level given the fact that commercially it is more realistic for a partial geographical assignment to "split up" use as to the particular Member States than to split up the use to parts of the UK.
Formalities of assignments

Community Trade Marks

By Article 17 of the Regulation the assignment must be in writing and signed by both parties unless the assignment operates by way of a judgment.

UK Trade Marks

Section 24(2) of the Act requires the assignment to be in writing signed by the proprietor (note that there is no requirement under the act that the assignee (purchaser) must sign the assignment).

Registration of assignments

Community Trade Marks
Article 17(5) of the Regulation requires that an assignment be registered. It is also advisable to register the assignment because such assignment is only effective as against third parties in all the Member States after registration: Article 23(1) of the Regulation.
A Recordal Application should be filed with OHIM. There is no fee payable to OHIM for this.

UK trade marks

Section 5 of the Act provides that assignments are registerable. This means you don't have to register the transaction but you may do so. It is, however, advisable to register the transaction. The primary reason is the new owner will not be able to enforce his mark for full relief unless the transaction is registered. A TM16 should be filed and the fee payable to the UKIPO is £50.00.

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