Assigning a trade mark? Avoid these costly errors

Tom Griffin, Solicitor

Assigning a UK trade mark registration is often treated as a straightforward administrative exercise. However, seemingly minor errors in the assignment process can have significant consequences for ownership, enforcement, and the value of the rights being transferred.

Three common mistakes when assigning a UK trade mark

1. Failure to record the change of ownership

Whilst there is no statutory requirement to record an assignment of a UK trade mark registration, failure to record it with the UK IPO in a timely manner can have serious consequences.

First, until an application to record the assignment has been made, the assignee may be prejudiced where a third party acquires a conflicting interest in the registration in good faith and for value in the intervening period. Second, if such an application has not been made within 6 months of the assignment date and the registration is infringed before the assignment is recorded, the general position is that the assignee will be unable to recover its legal costs incurred in proceedings for such infringement.

So, whilst assignment of a UK trade mark registration takes effect between the parties once validly executed, prompt recording at the UK IPO is required to preserve the fullest range of legal remedies and to minimise the risk of future disputes. Accordingly, it should be treated as an essential post-completion step.

2. Failure to address related rights

When assigning a UK trade mark registration, parties often focus exclusively on the registration itself and overlook the transfer of related rights. Depending on the nature of the transaction, consideration should be given to whether any associated goodwill, as well as any rights in respect of past infringements, should also be transferred to the assignee.

If the assignment is silent on the above matters, uncertainty may arise as to ownership of the goodwill in the mark (which can impact the ability of the assignee to bring a claim for passing off) and as to who is entitled to pursue claims for infringement occurring before the date of assignment (or to retain any sums recovered in respect of such claims).

3. Treating the TM16 as an effective assignment

A common misconception is that filing a Form TM16 at the UK IPO effects the transfer of ownership. It does not. Form TM16 is a purely administrative mechanism used to notify the UK IPO of a change in ownership and to update the register. It has no operative effect in transferring the legal title to a UK trade mark registration.

If you have any queries relating to intellectual property exploitation, please contact a member of our intellectual property department on 0161 832 3434 , or email us at [email protected].