Transfer of IP rights in the United Kingdom

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A trademark can be transferred by legal transaction, court order or testamentary disposition.

There is no requirement to record an assignment at the UK Intellectual Property Office in order for it to become effective. It is nevertheless advisable to do so.

2.1 Are original supporting documents essential or are copies sufficient? 

Registering an assignment for the entirety of a trademark must be done on form TM16.

Proof of the assignment transaction (copy documents are sufficient) only needs to be provided if both parties of their representatives do not sign the form TM16.

2.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalisation or notarisation requirements, but documents should be submitted in English or a certified translation provided.

It is advisable to record a trademark assignment, as otherwise the trademark cannot be enforced against a person who was not aware of the transaction.

If a trademark is infringed after the assignment but before this is recorded, the new proprietor must make the recordal within six months to recover the costs of litigation against the infringer.

The record in the trademark register has a declarative effect.

Assignments require the consent of all proprietors. The same TM16 form is used, which has provision to list multiple proprietors.

Yes, such assignments are recorded on form TM16P.

No if the new owner’s address is in the UK.

Yes if the new owner’s address is outside the UK.

As of March 2012, its costs GBP 50 to submit each TM16 form. Each form may contain multiple trademarks.

Trademark licences may be exclusive, sole or non-exclusive. The licence may also be restricted in terms of the goods and services, manner of use or locality.

There is no requirement to record a licence at the UK Intellectual Property Office in order for it to become effective. It is nevertheless advisable to do so.

9.1 Are original supporting documents essential or are copies sufficient? 

Trademark licences may be recorded. Licenses must be signed by the licensor to be valid. A copy of the licence agreement is only needed if the trademark owner or its representative does not sign the Form TM50. 

9.2 Are there any legalization and/or notarization and/or translation requirements?

There are no legalisation or notarisation requirements.
For registration, documents not in English must be translated.

9.3 Is there a must to use a specific form?

Registering a licence must be done on Form TM50.

It is advisable to record a trademark licence, as otherwise the rights in the license cannot be enforced against a person who was not aware of those rights. Recordal also provides the following benefits in the context of trademark infringement:

1. The licensee’s loss may be taken into account when deciding the level of damages;
2. The licensee may intervene in proceedings to obtain compensation for its loss;

If the license is exclusive, the licensee may call on the proprietor to bring infringement proceedings in relation to matters which affect the licensee’s interest, and bring infringement proceedings in its own name if the proprietor fails to act.
The record in the trademark register has a declarative effect.

Applicants for recordal must specify the exclusivity status of the licence, and any restrictions in the licence concerning the goods and services or locality

No. But whoever files the request must have a UK address.

As of March 2021, its costs GBP 50 to submit each TM50 form. Each form may contain multiple trademarks.

Trademarks may have pledges (fixed or floating charges) registered against them. The process has the same considerations, provisions and costs as for assigning a mark, but is recorded by way of Form TM24.

There is no requirement to record the charge at the Intellectual Property Office but the charge must be recorded at Companies House.