UK Trademark Assignment: How to Transfer Ownership with UKIPO

UK Trademark Assignment: How to Transfer Ownership with UKIPO

Transferring ownership of a UK trademark — whether through a sale, merger, corporate restructuring, or gift — requires proper documentation and recording with the UKIPO. Failing to record an assignment can leave the new owner unable to enforce the mark.

This guide covers the UK trademark assignment process, including legal requirements, UKIPO forms, and common pitfalls.

Pro tip: Planning to acquire or sell a trademark? Request a free trademark check to verify the mark's status and any encumbrances before completing the transfer.

What Is a Trademark Assignment?

An assignment is the transfer of ownership of a trademark from one party (the assignor) to another (the assignee). Under the Trade Marks Act 1994:

• Section 24(1) — A registered trademark is transmissible by assignment, testamentary disposition, or operation of law
• Section 24(2) — An assignment may be partial, covering only some of the goods/services
• Section 24(3) — An assignment must be in writing and signed by or on behalf of the assignor

Types of Trademark Transfer

Full Assignment

The entire trademark registration is transferred to the new owner for all goods/services.

Partial Assignment

Only a portion of the trademark registration is transferred. This can be:

• By goods/services — e.g., assigning the mark for Class 25 (clothing) but retaining it for Class 18 (leather goods)
• By limitation — e.g., assigning rights for specific geographic markets within the UK

Important: Partial assignments create two separate registrations — the original (reduced) and the new (assigned portion). Both owners can enforce their respective rights.

Assignment with or Without Goodwill

Unlike some jurisdictions, UK law allows assignment with or without the goodwill of the business. However:

• Assignment without goodwill may raise questions about the mark's validity if it could cause confusion
• The UKIPO does not prevent such assignments, but third parties could challenge them

Requirements for a Valid Assignment

1. Written agreement — oral assignments are not valid for registered trademarks
2. Signed by the assignor — or by someone authorized to sign on their behalf
3. Clear identification of the trademark(s) being assigned
4. Specification of goods/services if the assignment is partial
5. Consideration (payment) — not strictly required but recommended for contractual certainty

Recording the Assignment with UKIPO

While an assignment is legally effective from the date of the written agreement, recording with the UKIPO is strongly recommended.

Why Record?

• An unrecorded assignment means the new owner may not be able to claim damages or obtain an account of profits in infringement proceedings for the period before recording
• The register shows the assignor as owner — which can cause confusion and enforcement difficulties
• Third parties checking the register won't know about the transfer

How to Record

File Form TM16 with the UKIPO:

• Online: Through the GOV.UK trademark services
• By post: Send the completed form to the UKIPO

Required documents:

• Form TM16 (signed by both parties, or by one party with the written consent of the other)
• Copy of the assignment agreement (or a summary confirming the transfer)

Fee: No fee for recording an assignment with the UKIPO.

The GTC advantage: Our trademark assignment service handles the complete transfer process — from drafting the assignment agreement to recording with the UKIPO.

Assignment of Pending Applications

You can assign a trademark application before it's registered. The process is the same — written agreement + Form TM16. The UKIPO will update the applicant name on the pending application.

Licensing vs Assignment

An assignment permanently transfers ownership. If you want to allow another party to use your mark without transferring ownership, consider a licence instead.

The TMA 1994 provides for licensing under Sections 28–31:

Types of Licences

• Exclusive licence (Section 29) — only the licensee can use the mark (even excluding the trademark owner)
• Non-exclusive licence — multiple licensees can use the mark simultaneously
• Sub-licence — a licensee grants further licences (only if the original licence permits)

Recording Licences

Licences can be recorded on the UKIPO register using Form TM50 (for exclusive licences) or Form TM51 (for non-exclusive licences). Recording is important because:

• An exclusive licensee has the right to bring infringement proceedings (Section 31)
• A recorded licensee has certain rights against successors in title

Corporate Mergers and Restructuring

When trademarks transfer as part of a corporate merger, acquisition, or restructuring:

• The transfer happens by operation of law (no separate assignment agreement needed)
• You should still record the change with the UKIPO
• Provide the UKIPO with evidence of the corporate change (e.g., merger certificate, court order)

Security Interests

A UK trademark can be used as security for a loan or other financial obligation (Section 24(5) TMA 1994). The security interest can be recorded on the UKIPO register, giving notice to third parties.

International Considerations

If you're assigning UK trademarks as part of a global portfolio transfer:

• Each jurisdiction has its own recording requirements
• Madrid Protocol registrations require notification through WIPO
• EU trademarks require recording with the EUIPO
• Consider whether the assignment covers comparable UK trademarks (created from EUTMs post-Brexit)

For multi-jurisdiction assignments, our international trademark service coordinates the process across all relevant offices.

Common Pitfalls

1. Failing to record — the new owner may not be able to recover damages in infringement proceedings
2. Oral assignments — not valid for registered trademarks; must be in writing
3. Forgetting partial assignments — if you only sell part of the business, ensure the trademark assignment matches
4. Not checking for encumbrances — licences, security interests, or pending proceedings may affect the transfer
5. Ignoring comparable UK marks — if the trademark was originally an EUTM, don't forget the comparable UK trademark created at Brexit
6. Missing related registrations — ensure all related marks (variations, different classes) are included

Transfer Your Trademark with Confidence

Whether you're buying, selling, or restructuring trademark ownership, proper documentation and recording are essential. Global Trademark Company handles the complete process.

Start with a free trademark check →