Transferring ownership of a United Kingdom trademark, whether through a sale, merger, corporate restructuring, or gift, requires proper documentation and recording with the UKIPO. Applying to record the assignment within six months is what lets the new owner enforce the trademark fully and recover its legal costs in infringement proceedings.
This guide covers the United Kingdom trademark assignment process, including the legal requirements, the UKIPO forms and fees, and the common pitfalls.
Buying or selling a trademark? Check the register entry first for licenses, security interests, and pending proceedings. Our United Kingdom trademark service includes a register review before any 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 or 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 and services.
Partial Assignment
Only a portion of the trademark registration is transferred. This can be:
- By goods or services, for example assigning the trademark for Class 25 (clothing) but retaining it for Class 18 (leather goods)
- By limitation, for example assigning rights for specific geographic areas within the United Kingdom
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
United Kingdom law allows assignment with or without the goodwill of the business. However:
- Assignment without goodwill may raise questions about the trademark'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
- Written agreement: oral assignments are not valid for registered trademarks
- Signed by the assignor, or by someone authorized to sign on their behalf
- Clear identification of the trademark(s) being assigned
- Specification of goods and services if the assignment is partial
- Consideration (payment): not strictly required but recommended for contractual certainty
Recording the Assignment With UKIPO
An assignment is legally effective from the date of the written agreement, but recording with the UKIPO is strongly recommended, and in practice essential.
Why record?
- Unless the application to record is made within six months of the assignment, the court will not award the new owner its legal costs in proceedings over an infringement that took place before the assignment was recorded (Section 25(4))
- The register still shows the assignor as owner, which causes confusion and enforcement difficulties
- Third parties checking the register will not know about the transfer
- Marketplace programs such as Amazon Brand Registry verify ownership against the register
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: the UKIPO charges a government fee of £60 to record an assignment on Form TM16. Recording is usually quick; the UKIPO publishes its current processing times online. Our professional fee for preparing the agreement and recording it is on the pricing page.
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 is registered. The process is the same: written agreement plus Form TM16. The UKIPO will update the owner's name on the pending application.
Licensing vs Assignment
An assignment permanently transfers ownership. If you want to allow another party to use your trademark without transferring ownership, consider a license instead.
The TMA 1994 provides for licensing under Sections 28 to 31:
Types of Licenses
- Exclusive license (Section 29): only the licensee can use the trademark (even excluding the owner)
- Non-exclusive license: multiple licensees can use the trademark at the same time
- Sublicense: a licensee grants further licenses (only if the original license permits)
Recording Licenses
Licenses are recorded on the UKIPO register using Form TM50, which covers both exclusive and non-exclusive licenses; later amendments to or removal of a recorded license use Form TM51. 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 (for example, a merger certificate or court order)
Security Interests
A United Kingdom 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 are assigning United Kingdom trademarks as part of a global portfolio transfer:
- Each country or region has its own recording requirements
- International registrations under WIPO's Madrid System (the Madrid Protocol) require the change of owner to be recorded through WIPO
- EU trademarks require recording with the EUIPO, which records a transfer of ownership free of charge
- Check whether the assignment covers the comparable UK trademarks created from EUTMs at Brexit
For assignments in several countries and regions, our international trademark service coordinates the process across all relevant offices. Our United Kingdom country guide covers the wider system, from filing to renewal.
Common Pitfalls
- Failing to record: a new owner who does not apply to record within six months cannot recover its legal costs in infringement proceedings for the unrecorded period
- Oral assignments: not valid for registered trademarks; the assignment must be in writing
- Forgetting partial assignments: if you only sell part of the business, make sure the trademark assignment matches
- Not checking for encumbrances: licenses, security interests, or pending proceedings may affect the transfer
- Ignoring comparable UK trademarks: if the trademark was originally an EUTM, do not forget the comparable UK trademark created at Brexit
- Missing related registrations: make sure all related trademarks (variations, different classes) are included
Transfer Your Trademark With Confidence
Whether you are buying, selling, or restructuring trademark ownership, proper documentation and recording are what make the transfer stick. Global Trademark Company handles the complete process, from the agreement to recording the transfer.
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Frequently Asked Questions
How much does it cost to record a trademark assignment with the UKIPO?
The UKIPO government fee for Form TM16 is £60. Our professional fee for drafting the agreement and recording it is separate; see the pricing page.
How long does it take to record an assignment?
A straightforward assignment is usually recorded quickly. The UKIPO publishes its current processing times, and online submissions are generally faster than post.
Can I assign a United Kingdom trademark to a foreign company?
Yes. There are no nationality or residence restrictions on trademark ownership in the United Kingdom. A foreign company can own United Kingdom trademarks.
Do I need to assign goodwill with the trademark?
No. The TMA 1994 allows assignment with or without goodwill. However, assigning without goodwill in circumstances that could cause public confusion may be challenged.
What is Form TM16?
Form TM16 is the UKIPO form for recording a change of ownership (assignment). It must be signed by the assignor, assignee, or their authorized representatives.
Can I assign a trademark that is under opposition?
Yes. Pending proceedings do not prevent assignment. However, the new owner takes on the application subject to any ongoing opposition.
What happens if the assignor goes bankrupt?
Trademarks in bankruptcy transfer as part of the estate. The trustee in bankruptcy or administrator can assign the trademark. Recording with the UKIPO requires evidence of the insolvency appointment.
