TRADEMARK GUARDIAN

Home Page
About Us
Introduction of IP
Trademark Registration
Trademark Assignment
Enforcement
According to the Trade Marks Ordinance (Cap.559), a registered trade mark, or an application for registration of a trade mark, can be transferred from one person to another. A trade mark assignment occurs when such transfer occurs.

 




What is recognised as a part of trade mark?

Some examples are:
  • Words
  • Phrases
  • Logos
  • Slogans
  • Scent
  • Logo shapes
  • A distinctive combination of musical notes
In Qualitex Co. v. Jacobson Products Co., Inc, a US Supreme Court case, even color can be a trademark if it acts purely as a symbol!




What types of assignment are available?

Click to see!




When should the trademark be assigned?




What Terms shall be Included?

  • According to S27(4) of Trade Marks Ordinance (TMO), the trademark assignment agreement must be in writing.
  • Although TMO only requires assignment to be signed by assignor (s27(4) TMO), it is advised to signed by assignee as well for better protection and prevention of disputes. 
  • A deed under seal will replace the need to provide monetary consideration, but to be safe, the trademark shall be transferred for a valid consideration. 

The parties must identify the type of assignment they wish to have, either with or without goodwill, complete or partial.

Proper identification of the assignor and assignee to the assignment (name and address, ID number, company registry number, etc).

  • Under Trade Marks Rules 63(1)(a)(i) and (b)(i), the assignee’s name and address were required.

Date of the assignment is required under Trade Marks Rule 63(1)(a)(ii) and (b)(ii)).

If the effective date of assignment is different from the date of assignment, such date shall be clearly stated.

Details and identification of the trademarks to be assigned have to be included (e.g. the registered number of the trademark in the trade mark registry)

 (sections 27(3) and 29(2)(a); rule 63(1)(b)(iii) of Trade Marks Rule). 

 Assignment shall include a guarantee from the assignors that they’re the proper owner and have the authority to transfer the mark.

  • However, it shall be noted that assignee has responsibility to ensure that the entity named as the applicant or the owner of a trade mark has the capacity of owning property and is recorded in an appropriate manner to safeguard the rights in the registration. 
  • Therefore, assignee shall ensure the warranty clause is provided, while conducting due diligence at the same time.

The jurisdiction where any future disputes will be handled shall be included. 

Form 10 should be duly filled and submitted to the registrar (Rule 62(2) Trade Marks Rules (TMR)) along with the trademark assignment agreement between parties (if necessary) for valid registration.

  • It is no longer necessary to produce the assignment when applying to register particulars (of an assignment of a registered mark) or when giving notice to register particulars (of an assignment of an application for registration) if the application, or notice, is signed by or on behalf of the assignor (rule 62(2) TMR)
  • If the application, or notice, is not signed by or on behalf of the assignor, a copy of the assignment has to be filed and will be open to public inspection (rule 69(1)(r) TMR).
  • Where a copy of the assignment is not filed, other documentary evidence will be accepted if it is sufficient to establish the assignment (rule 62(2) TMR)

Therefore, in order to lower the risk of unsuccessful registration, it is advised to ask assignor to sign on Form 10 and enter into an assignment beforehand.

 The agreement should be notarized to maintain its validity. 




What are the Benefits and Risks?


Before heading to create your own assignment, please read:




A Friendly Reminder to Assignee (Buyer)

Make sure the assigned trademark has been registered

Pay attention to whether the trademark has been approved for registration.

lf the assigned trademark is not registered or has been revoked or declared invalid, such trademark cannot be protected by the law, no one has the right to use this trademark or apply for registration, and the assignee cannot obtain the trademark exclusive rights.

That is, the assignor needs to be the owner of the registered trademark or a special authorized agent.

If the trademark is co-owned, it also needs the consent of the co-owner to transfer trademark rights. (s28 Trade Marks Ordinance)

If the registered trademark is about to expire, the assignee and related parties should urge the trademark registrant to complete the renewal procedures to avoid damaging their commercial rights.

In Hong Kong,

  • Registration is for a period of 10 years beginning on the date of registration (s.49(1) Trade Marks Ordinance) (TMO)
  • A registration of trade mark can be renewed for further periods of 10 years each (s.49(2), TMO), with the payment of HKD 2,670 (plus HKD 1,340 per each additional class – for multi-class registration) 
  • Renewal takes effect from the expiry date (s.50(4) TMO)

Trademark could only be used on the goods/services designated by the original trademark after assignment.

  • The exclusive right to use a registered trademark is limited to the goods/services approved for use.
 
  • Before the assignment, buyer/assignee should find out whether the trademark owner is assigning the trademark beyond its approved use range, and also check whether the business scope you need to use the trademark is consistent with the goods/service items specified by the assignor’s trademark registration, so as not to cause trademark infringement and unavailability problem.

 

 




Ready to make your Assignment?



Useful links

Disclaimer: Nothing in this website is intended to be nor should be construed as legal advice. This is an educational project created by students.  Please consult your lawyer for legal advice.