Trade mark assignment and licensing

The Trade Mark Act 1994 provides that a registered trade mark is an item of personal property, as such it is possible to assign or licence the intellectual property rights found in the registered trade mark.

Assignment of a trade mark can be for some or all of the goods or services for which the mark is registered, or for use in a particular manner, or a particular locality. It should be noted that is not effective unless it is in writing and signed by or on behalf of the owner of the trade mark.

However, the owner of the trade mark may wish to retain an interest in the trade mark, rather than assigning the trade mark it can be possible to licence the rights in the mark. This allows for the licensee to perform acts that would otherwise constitute trade mark infringement, whilst allowing for the proprietor to retain ownership of the trade mark.  

A trade mark licence may be for all or some of the goods or services concerned, it may also include the use of the trade mark in a particular manner or territory. However, as the two entities will be associated by the licence, deciding the right partner and licence is paramount.

If you wish to assign or licence your trade mark, then do not hesitate to contact the Trade Mark Room. 

By Sam O'Toole