Trade mark assignment and licensing
Trade mark assignment and licensing

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Trade mark assignment and licensing
  • Assignment
  • Licensing
  • Heads of Terms
  • Confidentiality
  • Miscellaneous

Trade marks can be directly exploited by the trade mark owner (ie by self-use) but a trade mark owner can also generate income by transferring rights in the mark to other parties by various methods including assignment, licensing and by using them as security to raise funds. This Practice Note deals with the assignment and licensing of trade marks.

For more information about taking security over intellectual property (IP) rights, see Practice Notes: Taking security over intellectual property rights and Taking security over intellectual property—practical points.

You may also find it helpful to refer to guidance issued by the UK Intellectual Property Office (UKIPO): License, mortgage, transfer, merge and market your trade mark and EU Intellectual Property Office (EUIPO): Managing trade marks.

For more information about managing a trade mark portfolio and for practical tips on drafting and negotiating a trade mark licence, see Practice Notes: Managing a trade mark portfolio and Drafting a trade mark licence—a practical guide.

Assignment

An assignment is the transfer of a trade mark to another so that the assignor is no longer the owner of that mark. The assignor cannot therefore use the mark unless the assignee grants a licence back to the assignor.

A trade mark proprietor may choose to assign (rather than license) its trade mark if it has no continuing interest in it or if