Recording Title Updates

Question 1

Why is it important to record changes?

Answer 1

1. Official correspondence is sent to the Address for Service, if this has changed, correspondence may not reach the representative and important deadlines may be missed
2. TM searching can be more accurate if Registers are correct, it can be difficult to produce up to date schedules of cases for an owner if changes have not been recorded
3. Your client will not be able to take action against any possible infringement if ownership of the mark is not up to date
4. Some overseas countries charge a fine if title updates are not recorded within a certain timescale

Question 2

What is an assignment?

Answer 2

An assignment is the formal transfer of ownership of the rights in a trademark from the registered proprietor (owner) to someone else, whether that is an individual or company

This includes changes of ownership such as company mergers, changes of partners in a partnership, changes of trustees etc

Assignor (transferor) - party who currently holds the rights - current registered proprietor
Assignee - party acquiring rights

Question 3

What must be included on the Deed of Assignment?

Answer 3

1. Name and address of assignor
2. Name and address of assignee
3. Details of trademark being assigned (country, trademark application or registration number, IP title/dates of filing/registration)
4. Whether mark is being assigned with goodwill
5. Sum paid by assignee to assignor
6. Date of assignment
7. Signature of both parties

Assignment must be in writing
Good practice for UK to include company numbers

Once Deed of Assignment has been executed (signed and dated) needs to be recorded with UKIPO - recommended to be recorded within 6 months from date of execution (date of last signature)

Question 4

What is a company merger?

Answer 4

Two or more companies merging into one single entity

A company merger can require both recordal of assignment and/or change of name address depending on which entity is the owner if the marks

Question 5

What are changes of name/address?

Answer 5

Where the owner, whether a company or individual, has changed their name, address or both. These changes need to be recorded on the Register.

Question 6

What is a change of legal form?

Answer 6

Similar to a change of name, sort of like a change of entity type, e,g ABC Limited change to ABC plc (from a limited company to a public limited company)

Question 7

What is change of address for service?

Answer 7

Where professional representation has changed from one firm to another, the new representatives details should be recorded with the UKIPO. This is known as the address for service.

All correspondence will be sent to the AFS if recorded, if not correspondence sent to IP holder.

Question 8

What is the relevant form for an assignment in the UK?

Answer 8

Form TM16

Assignee must apply to the Registrar for the assignment to entered on the UK Register by way of Form TM16

Form must be signed by both assignor and assignee (representatives can do this on their behalf)

If you are representative for both sides not necessary to provide supporting documentation, if you are not representative for both sides, it is either necessary to submit documentation (e.g copy of the Deed of assignment) or get the assignor/assignee’s representative to sign Form TM16

NOT a substitute for assignment or transfer documents, merely the form to make recordal

Question 9

What following information must be entered in the Register for an assignment?

Answer 9

1. Name and address of assignee
2. Date of assignment
3. If the Registrar is not notified of the transaction within 6 months of it taking place, they will record the date they received the notification as the effective filing date

Question 10

Official fee for assignment

Answer 10

£50! Regardless number of marks being assigned

Question 11

What is partial assignment and how do you file it?

Answer 11

Also known as splitting a mark, this is where an IP holder assigns only certain classes or specific goods/services to a third party (and retains rights to the remaining classes or goods/services)

A mark can be partially assigned for -
Some of the goods/services
Use of the mark in a particular manner or locality

Once split each part will become a trademark registration in its own right, identifiable by a single letter suffix

Each mark must be separately maintained and renewed

In addition to information normally entered in register, a partial assignment will also include description of the right being assigned

Form TM16P - £50

Question 12

How do you file a change of name, address or legal form?

Answer 12

Form TM21A - no official fee

Changes will normally cover all marks owned by proprietor though a request may be made to change only some of the marks

Question 13

How do you file a change of representative (AFS)?

Answer 13

Form TM33 (no official fee)

Question 14

How can you submit forms/fees to the UKIPO?

Answer 14

Can be submitted via email to forms@ipo.gov.uk (or post)

Can submit fees via debit/credit online, IPO deposit account, Cheque, or bank transfer

Question 15

Where can you file changes on the International Register?

Answer 15

E-Madrid, WIPO IP Portal

Centralized and secure self portal through which can access and manage your international trademark registrations

Manage your representative/upload forms/change ownership

Question 16

How can you file assignment for an international registration?

Answer 16

Online - E-Madrid WIPO IP Portal - Form MM5

Request may be presented to WIPO by
- the IP holder (or their representative) — best way
- the Office of the Contracting Party of the recorded holder
- the Office of the Contracting Party of the assignee

If filed through a national office may require furnishing of evidence concerning change of ownership
WIPO does not require evidence of change of ownership or supporting document’s

Can request recordals for multiple international registrations on a single application provided
- the registrations are being transferred from the same recorded assignor to same assignee
- that for each registration the change applies to all of the designated countries and concerns all goods or services

The assignee needs to have entitlement to own it (but does not matter if the base mark is different from country which they claim entitlement)

Question 17

Official fees for International Registration assignment

Answer 17

CHF 177 per registration

Question 18

How to file a change of name, address or legal form for international registration?

Answer 18

MM9 - CHF 150 (irrespective of number of registrations)

Question 19

How to file an appointment of representative for international registration?

Answer 19

Form MM12

If you are recording your firm as representative (either where there is none previously recorded or to replace existing representative, need to file Form MM12)

Needs to be signed by authorized signatory of the holder (owner of IP right)

WIPO does not require that the representative be a national, domiciled or resident in a member state. But may be necessary to appoint local agents to act before Offices of designated countries if refusals or other official actions

No official fee

Question 20

How to submit forms to WIPO?

Answer 20

Forms
- electronically through E-Madrid
- through office of contracting party of the IP holder

Fees
- WIPO current account
- transfer of fees

Question 21

How handle changes to title for overseas applications?

Answer 21

Best to use local agents who have good knowledge and practice of local legislation

Is a translation necessary?
Power of attorney?

Question 22

What is goodwill?

Answer 22

Essentially the recognition that a trademark has with consumers and the extra value this represents I.e consumers will want to buy a certain product because they recognize and value brand name

Some countries require that a TM is assigned with goodwill and in order for the transaction to be recorded, if it is with goodwill this should be specifically mentioned in the records