Assignment of trade marks

What's an assignment of trade marks and when do you need it?

Use this template assignment agreement to transfer your ownership of one or more trade marks to someone else.

Trade mark protects IP such as brand names, slogans, and logos from being used by other businesses. There are two types of trade marks : registered ones and unregistered ones. Depending on your circumstances, you may need to cover both of them in your assignment.

Trade marks protect words, phrases, sounds, colours, and/or logos that are used in a distinctive way, are completely original, and, of course, are not already registered.

To be able to assign trade marks (or to licence them), you’ll need to demonstrate that you own them, or that you’re in the process of applying for registration and ownership. Your ownership position will affect the wording that is used in your agreement, such as whether you’re assigning the trade marks with ‘full title guarantee’, or what’s called an assignment ‘subject to encumbrances’, which puts your assignee on notice that you may not entirely own these IP rights. It will also affect the warranties that you may be expected to give in this type of transaction – our template contains built-in guidance to help you make the right drafting choices here and to know when and if you might want to take legal advice in relation to the deal.

The assignment document is produced in the form of a deed. Deeds are contracts, but they have more exacting signature provisions, incorporating witnesses of signatures, which means they tend to be used in certain circumstances where a straightforward contract would be considered insufficient.

The point of including the witnesses is to make clear, unequivocally, that both the signing parties fully understood what they were signing and that they intended to agree to the terms set out in the deed. Powers of attorney, transfers of property, including intellectual property and other valuable items will usually be done by way of a deed. It’s considered the most appropriate way to evidence that the IP owner fully intends to transfer valuable property to someone else.