Trade mark assignment and licensing
Trade mark assignment and licensing

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

  • Trade mark assignment and licensing
  • Assignment
  • Partial assignments
  • Obligation to transfer UK trade marks
  • Obligation to transfer EUTMs
  • Comparable trade marks (EU)
  • Formalities
  • Registration of an assignment
  • Assignment of EUTM not registered on IP completion day
  • Failure to register an assignment
  • More...

Trade marks can be exploited in a number of ways. They might be directly exploited by a trade mark owner (ie by self-use), or they could be used to 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 IP rights, see Practice Notes: Taking security over intellectual property rights and Taking security over intellectual property—practical points.

The UK Intellectual Property Office (IPO) and the EU Intellectual Property Office (EUIPO) have also (respectively) issued the following guidance: License, mortgage, transfer, merge and market your trade mark and 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.

As of IP completion day (11 pm GMT on 31 December 2020), Regulation (EU) 2017/1001, which governs EU trade marks (EUTMs) is revoked in the UK, meaning that the UK is no longer part of the EUTM regime. Pursuant to the Trade Marks (Amendment etc) (EU Exit) Regulations 2019, SI 2019/269, holders of EUTMs immediately before IP completion day were granted comparable national trade mark registrations which

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