Canadian Trademark Assignment: How to Transfer and Record Ownership

A trademark assignment is the transfer of ownership from one party to another, and it is a routine part of business. Whether the trigger is a sale, a merger, an acquisition, or a corporate restructuring, transferring a Canadian trademark takes proper documentation plus a recording with the Canadian Intellectual Property Office (CIPO) so the new owner's rights are clear on the register.

This guide covers the legal requirements, the recording procedure and its cost, and the strategic points to settle before you sign, all under the Trademarks Act (R.S.C., 1985, c. T-13).

Pro tip: If you are acquiring a trademark, run a free trademark check to verify its current status and spot any issues before you sign.

What is a trademark assignment?

A trademark assignment transfers ownership rights in a trademark from the assignor (current owner) to the assignee (new owner). In Canada, an assignment can cover:

• Registered trademarks, those currently on the Canadian Trademarks Register
• Pending applications, filed but not yet registered
• Common law rights, unregistered rights based on use in Canada

Unlike some countries, Canada does not require that the goodwill of the business be transferred along with the trademark. Transferring goodwill is still the better practice, because it keeps the trademark distinctive and keeps its value with it.

Types of Trademark Assignments

Complete Assignment

The entire trademark, covering all goods and services, transfers to the new owner.

Partial Assignment

Only part of the rights transfers. This can involve:

• Specific goods or services, where the assignor keeps the trademark for some and transfers the rest
• Geographic limitations, which are less common in Canada because trademark rights are national in scope

Note: Partial assignments add complexity. If the same trademark ends up owned by different parties for different goods and services, confusion issues can follow.

Assignment Through Merger or Acquisition

When one company acquires another, trademark rights usually transfer as part of the acquired company's assets. That can happen through:

• Asset purchase agreements
• Share purchase agreements, where the trademark-owning entity itself is acquired
• Corporate mergers and amalgamations

Recording an Assignment With CIPO

Why record?

An assignment is valid between the parties without recording, but recording with CIPO is worth doing because:

• Public notice. The transfer appears on the Canadian Trademarks Register.
• Enforceability against third parties. An unrecorded assignment may not hold up against someone who dealt with the registered owner in good faith.
• Chain of title. The ownership history stays clean, which matters at the next sale or financing.
• Renewal and maintenance. CIPO correspondence reaches the right owner.

How to Record

To record a transfer with CIPO, submit:

1. A written request to record the transfer
2. Evidence of the assignment, such as a copy of the assignment agreement or other documentation of the transfer
3. Details of the new owner, full legal name and address
4. The registration or application numbers affected
5. The CIPO fee

What It Costs

CIPO charges CAD 125 per trademark to register the transfer of a trademark. Many CIPO fees are adjusted each January, so confirm the current figure before you file.

For context on the other Canadian government fees, filing a new application is CAD 491.06 for the first class and CAD 149.04 for each further class, and an opposition is CAD 1,115.08. Our pricing page shows our professional fee on top of the government fee, and the Canada country guide sets out the wider process.

How we help: Our trademark assignment service handles the whole transfer, from drafting the paperwork to recording it with CIPO.

The Assignment Agreement

A well-drafted assignment agreement should include the following.

Essential Terms

• Identification of the trademark or trademarks, with registration and application numbers and a description
• Identification of the parties, full legal names and addresses of assignor and assignee
• Scope of the transfer, complete or partial, and which goods and services
• Effective date, when the transfer takes effect
• Consideration, the price or value exchanged, which can be nominal
• Goodwill, an explicit statement of whether the goodwill of the business is included

Additional Provisions

• Representations and warranties, the assignor's confirmation of valid ownership and no encumbrances
• Cooperation clause, an obligation to sign further documents needed for recording
• Indemnification, cover for claims arising from the assignor's earlier use
• Transition provisions, a timeline for the assignor to stop using the trademark

Licensing vs. Assignment

Not every transfer of the right to use a trademark is an assignment. Licensing lets another party use it while the original owner keeps ownership.

Under the Trademarks Act:

• Section 50 governs licensed use in Canada
• The owner must keep direct or indirect control over the character or quality of the goods and services, which is where quality control comes in
• Without that control, the trademark becomes vulnerable to attack for naked licensing
• Licenses should be in writing, even though an oral license is not prohibited

When to License and When to Assign

Special Considerations

Security Interests

Trademarks can be used as collateral for financing. Security interests should be documented properly, and they may be recorded with CIPO and under the applicable provincial personal property security legislation.

Bankruptcy and Insolvency

In bankruptcy, trademarks form part of the debtor's estate and can be assigned by the trustee. Special rules under the Bankruptcy and Insolvency Act may apply.

International Considerations

If the Canadian trademark sits inside a larger international portfolio:

• Coordinate the assignments across every country and region so the chain of title matches
• International registrations under WIPO's Madrid System (the Madrid Protocol) have their own transfer procedure through WIPO
• Take advice on the tax treatment of a cross-border trademark transfer

Common Pitfalls

1. Failing to record. An unrecorded assignment is harder to enforce against third parties.
2. Incomplete documentation. Vague or missing terms in the agreement cause delays at the recording stage.
3. Forgetting related applications. Make sure every pending application is named in the transfer.
4. Ignoring common law rights. The assignment should cover unregistered rights as well.
5. Missing renewal obligations. The new owner now tracks the renewal deadlines.
6. Not updating agent records. If a Canadian trademark agent filed the trademark, update the agent of record.

After the Assignment

Once the transfer is recorded, the new owner should:

• Verify the register. Confirm CIPO has updated the ownership record.
• Update the trademark agent. Make sure your Canadian agent has current contact details.
• Monitor the trademark. Watch for conflicting applications on the CIPO database.
• Plan for renewal. Track the upcoming renewal deadlines.
• Keep using the trademark. Consistent use is what protects it from non-use cancellation.

Buying into the Canadian market rather than buying an existing trademark? Our Canada trademark service files new applications with CIPO.

Sources

• CIPO, Canadian trademarks database and fees
• Trademarks Act (R.S.C., 1985, c. T-13)