How much of an asset is my trade mark?

What many people don’t realise is that not only can a trade mark be beneficial financially in its use as an indication of quality and reputation to customers but its value as a mark in itself can be high.

Many large corporations have a vast library of protected intellectual property. If the current owners were to sell to another, that person would be buying not only the physical assets but also any trade marks or designs etc they may have. With this comes the businesses reputation, its ability to attract customers, its indicator of origin and quality and so much more.

This comes at a high price.

Therefore, if you own a business and you are looking to sell it or just looking to sell a trade mark that you know longer need, you need to be aware of the steps you need to take.

To sell your trade mark you need to complete an assignment.

An assignment is a complete transfer of ownership of the mark from yourself to another party. You will no longer have any attachment to the mark.

To do this successfully there are a number of requirements to satisfy. These are outlined in Section 24 Trade Mark Act 1994.

For any assignment to be binding on a third party, it needs to fulfil some formalities. These entail that the assignment must be in writing and has to be signed by both parties.

In addition, notification does need to be submitted to the UK Intellectual Property Office so they can lodge the change in ownership.

What many people do not realise is that the complete mark does not need to be transferred in a assignment, it can be only part of the mark. For example, if you have a mark registered for a number of classes of goods or services, you can assign the mark for a select few of these to another if you do not use them. Also you could authorise a party to use your complete mark but only in certain geographical locations.

For further advice, contact Jane at The Trademarkroom

By Ellis Sweteenham