deed of assignment of registered lease

Deed of Assignment of Lease Agreement to transfer complete right to the Tenant.

Format of deed of assignment of lease agreement for transferring right to the tenant..

An assignment of a lease is a complete transfer of the right to be the tenant under the lease. The third-party assignee becomes the "tenant" under the lease, taking over all of the leased premises, substituting for the old tenant. When the lease is assigned, the assigner move out permanently and a new tenant moves in for the remainder of the lease term. An assignment of a lease differs from a sublet. With a sublet, the original tenant gives up an apartment temporarily. With an assignment, the original tenant gives up the apartment permanently. Assignment agreement should be legally binding, so it is necessary to prepare and sign a deed of assignment.

DEED OF ASSIGNMENT OF LEASE

THIS DEED OF ASSIGNMENT is made this ______ day of_____

Mr. _________________ son of _____________ Resident of _____________ hereinafter called "the Assignor" of the One Part:

Mr. _____________ Son of _____________ Resident of _____________ hereinafter called "the Assignee" of the Other Fart.

WHEREAS: 1. By a Deed of Lease dated_____________ and made between_____________ therein referred to as the Lessor of the One Part and the Assignor, therein referred to as the Lessee of the Other Part and registered with the Sub-Registrar of Assurances at _____________ under No _____________ of Book No. I on the _____________ the said Lessor demised unto the Assignor in perpetuity ALL that piece of land situate at_____________ and more particularly described in the Schedule thereunder being the same as described in the Schedule hereunder written together with the buildings and structures standing thereon at the rent and subject to the covenants and agreements therein contained;

2. By Clause_____________ of the said Deed of Lease it was in teralia provided as follows, "Not to assign the demised premises for the whole of the term hereby granted without the previous consent in writing of the Lessor his heirs, executors, administrators and assigns, which consent shall not be unreasonably withheld".

3. The Assignor has agreed with the Assignee for an assignment to him of the said demised premises for the remaining term in perpetuity free from all encumbrances at or for the price of Rs _____________.

4. The said Lessor by his letter dated_____________ has given his consent to the assignment of the demised premises.

NOW THIS DEED WITNESSETH that in pursuance of the said agreement and in consideration of the sum of Rs_____________ (Rupees) paid in the manner following viz. Rs_____________ on_____________ day of_____________ as earnest or deposit and Rs (Rupees) on or before the execution of these presents making together Rs _____________ (Rupees _____________ _____________. ) by the Assignee to the Assignor (the receipt whereof the Assignor doth hereby admit) He the Assignor hereby assigns unto the Assignee ALL that piece of land situate at_____________ in the Registration Sub-District of_____________ and more particularly described in the Schedule hereunder written TOGETHER WITH the buildings and structures thereon AND TOGETHER with all rights, liberties privileges, easements and appurtenances whatsoever to the said premises or any part thereof belonging or in anywise appertaining or usually held or occupied therewith or reputed to belong or be appurtenant thereto AND all the estate, right, title, interest property, claim and demand whatsoever of him the Assignor in and to the said premises or any part thereof TO HOLD the said land and other the premises hereby assigned unto the Assignee in perpetuity subject to the payment of ground rent of Rs_____________ reserved by the said Deed of Lease and to the performance and observance of the covenants and stipulations therein contained and on the part of the Lessee to be observed and performed and which henceforth on the part of the Assignee ought to be observed and performed.

AND THE ASSIGNOR COVENANTS WITH THE ASSIGNEE AS FOLLOWS - the said lease is now a valid and subsisting lease of the said premises hereinbefore expressed to be hereby assigned and is in no wise void or voidable that all the rents reserved and the covenants by the Assignor and the conditions contained in the said Deed of Lease have been paid, observed and performed upto the date of these presents; that the Assignor now has in himself good right and absolute power to assign the said premises unto the Assignee for the term and in the manner aforesaid that it shall be lawful for the Assignee from time to time and at all times hereafter during the said term to peaceably and quietly hold, possess and enjoy the said premises hereby assigned or expressed so to be with the appurtenances on and subject to said lease and receive the rents, and profits thereof for his own use and benefit without any eviction interruption claim or demand whatsoever from or by the Assignor or from or by any other person or persons lawfully or equitably claiming by, from, under or in trust for them. that the said premises are free and clear and freely clearly and absolutely acquitted, exonerated, released and forever discharged or otherwise by the Assignor well and sufficiently saved, defended, kepi harmless and indemnified of from and against all estates charges and encumbrances whatever made executed occasioned or suffered by the Assignor or by any other person or persons having or lawfully claiming by from under or in trust for him. that the Assignor and all persons having or lawfully claiming by. from, under or in trust for him shall and will from time to time and at all times hereafter during the said term at the request and costs of the Assignee do and execute or cause to be done and executed all such further and other lawful and reasonable acts, deeds, things, matters and assurances in the law whatsoever for further and more perfectly and absolutely assuring the said premises hereby assigned or expressed so to be and every part thereof unto and to the use of the Assignee for the residue of (he said term and in manner aforesaid as shall or may be reasonably required.

AND the Assignee doth hereby covenants with the Assignor that he the Assignee will henceforth during the said term pay the rents reserved by and perform all the covenants by the Lessee and conditions contained in the said Deed of Lease and keep indemnified the Assignor and his estate and effects from and against the payment of the said rent and the observance and performance of the said covenants and all actions, proceedings, costs, damages, claims, demands and liability whatsoever for or on account of the same or in anywise relating thereto.

IN WITNESS WHEREOF the parties hereto have hereunto set and subscribed their respective hands the day and year first hereinabove written.

THE SCHEDULE ABOVE REFERRED TO

Signed and Delivered by the within-named Assignor

Signed by the within-named Assignee

Received from the Assignee above-named a sum of Rs_____________ today which together with the sum of Rs_____________ paid on_____________ as earnest makes up the sum of_____________ Rupees (Rupees) being the full consideration money to be paid by him to me. Witnesses:

I say received.

Relevant Sections of Transfer of Properties Act 1882

Section 107 "Leases how made"

107. A lease of immovable property from year to year, or for any term exceeding one year, or reserving a yearly rent, can be made only by a registered instrument. All other leases of immovable property may be made either by a registered instrument or by oral agreement accompanied by delivery of possession. Where a lease of immovable property is made by a registered instrument, such instrument or, where there are more instruments than one, each such instrument shall be executed by both the lessor and the lessee: Provided that the State Government may, from time to time, by notification in the Official Gazette, direct that leases of immovable property, other than leases from year to year, or for any term exceeding one year, or reserving a yearly rent, or any class of such leases, may be made by unregistered instrument or by oral agreement without delivery of possession.

Section 108 "Rights and liabilities of lessor and lessee"

108. In the absence of a contract or local usage to the contrary, the lessor and the lessee of immovable property, as against one another, respectively, possess the rights and are subject to the liabilities mentioned in the rules next following or such of them as are applicable to the property leased :-

A. Rights and liabilities of the Lessor (a) the lessor is bound to disclose to the lessee any material defect in the property, with reference to its intended use, of which the former is and the latter is not aware, and which the latter could not with ordinary care discover; (b) the lessor is bound, on the lessee's request to put him in possession of the property; (c) the lessor shall be deemed to contract with the lessee that, if the latter pays the rent reserved by the lease and performs the contract binding on the lessee, he may hold the property during the time limited by the lease without interruption. The benefit of such contract shall be annexed to and go with the lessee's interest as such, and may be enforced by every person in whom that interest is for the whole or any part thereof from time to time vested. B. Rights and liabilities of the lessee (d) if during the continuance of the lease any accession is made to the property, such accession (subject to the law relating to alluvion for the time being in force) shall be deemed to be comprised in the lease; (e) if by fire, tempest or flood, or violence of any army or of a mob, or other irresistible force, any material part of the property be wholly destroyed or rendered substantially and permanently unfit for the purposes for which it was let, the lease shall, at the option of the lessee, be void : Provided that, if the injury be occasioned by the wrongful act or default of the lessee, he shall not be entitled to avail himself to the benefit of this provision; (f) if the lessor neglects to make, within a reasonable time after notice, any repairs which he is bound to make to the property, the lessee may make the same himself, and deduct the expense of such repairs with interest from the rent, or otherwise recover it from the lessor; (g) if the lessor neglects to make any payment which he is bound to make, and which if not made by him, is recoverable from the lessee or against the property, the lessee may make such payment himself, and deduct it with interest from the rent, or otherwise recover it from the lessor; (h) the lessee may even after the determination of the lease remove, at any time whilst he is in possession of the property leased but not afterwards, all things which he has attached to the earth : provided he leaves the property in the state in which he received it ;

Legal Formats, Alphabetical Order

Agreement Formats

Deed of Assignment: Everything You Need to Know

A deed of assignment refers to a legal document that records the transfer of ownership of a real estate property from one party to another. 3 min read updated on January 01, 2024

Updated October 8,2020:

A deed of assignment refers to a legal document that records the transfer of ownership of a real estate property from one party to another. It states that a specific piece of property will belong to the assignee and no longer belong to the assignor starting from a specified date. In order to be valid, a deed of assignment must contain certain types of information and meet a number of requirements.

What Is an Assignment?

An assignment is similar to an outright transfer, but it is slightly different. It takes place when one of two parties who have entered into a contract decides to transfer all of his or her rights and obligations to a third party and completely remove himself or herself from the contract.

Also called the assignee, the third party effectively replaces the former contracting party and consequently assumes all of his or her rights and obligations. Unless it is stated in the original contract, both parties to the initial contract are typically required to express approval of an assignment before it can occur. When you sell a piece of property, you are making an assignment of it to the buyer through the paperwork you sign at closing.

What Is a Deed of Assignment?

A deed of assignment refers to a legal document that facilitates the legal transfer of ownership of real estate property. It is an important document that must be securely stored at all times, especially in the case of real estate.

In general, this document can be described as a document that is drafted and signed to promise or guarantee the transfer of ownership of a real estate property on a specified date. In other words, it serves as the evidence of the transfer of ownership of the property, with the stipulation that there is a certain timeframe in which actual ownership will begin.

The deed of assignment is the main document between the seller and buyer that proves ownership in favor of the seller. The party who is transferring his or her rights to the property is known as the “assignor,” while the party who is receiving the rights is called the “assignee.”

A deed of assignment is required in many different situations, the most common of which is the transfer of ownership of a property. For example, a developer of a new house has to sign a deed of assignment with a buyer, stating that the house will belong to him or her on a certain date. Nevertheless, the buyer may want to sell the house to someone else in the future, which will also require the signing of a deed of assignment.

This document is necessary because it serves as a temporary title deed in the event that the actual title deed for the house has not been issued. For every piece of property that will be sold before the issuance of a title deed, a deed of assignment will be required.

Requirements for a Deed of Assignment

In order to be legally enforceable, an absolute sale deed must provide a clear description of the property being transferred, such as its address or other information that distinguishes it from other properties. In addition, it must clearly identify the buyer and seller and state the date when the transfer will become legally effective, the purchase price, and other relevant information.

In today's real estate transactions, contracting parties usually use an ancillary real estate sale contract in an attempt to cram all the required information into a deed. Nonetheless, the information found in the contract must be referenced by the deed.

Information to Include in a Deed of Assignment

• Names of parties to the agreement
• Addresses of the parties and how they are binding on the parties' successors, friends, and other people who represent them in any capacity
• History of the property being transferred, from the time it was first acquired to the time it is about to be sold
• Agreed price of the property
• Size and description of the property
• Promises or covenants the parties will undertake to execute the deed
• Signatures of the parties
• Section for the Governors Consent or Commissioner of Oaths to sign and verify the agreement

If you need help understanding, drafting, or signing a deed of assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

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• Contract for Deed California
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• Assignment Law
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How Do You Assign or Transfer a Commercial Lease?

By Jessica Dinh Law Graduate

Updated on December 15, 2023 Reading time: 5 minutes

This article meets our strict editorial principles. Our lawyers, experienced writers and legally trained editorial team put every effort into ensuring the information published on our website is accurate. We encourage you to seek independent legal advice. Learn more .

• 1. Seek Your Landlord’s Consent 

2. Deed of Assignment

3. transferring a retail lease, key takeaways.

If you lease a commercial property to operate your business, there may be situations where you need to transfer the lease. There are usually two situations when a tenant will transfer (also known as an assignment ) a commercial lease to another party (the assignee) before the end of a lease term. Namely, where the tenant is:

• selling their business, and the purchaser agrees to accept the existing lease rather than enter into a new lease with the landlord; or
• is proposing to exit the lease and has found a party who will take on the existing lease.

This article explains how the transfer of a commercial lease works. It also explains the critical terms of the deed of assignment from the perspective of the landlord, tenant and assignee.

1. Seek Your Landlord’s Consent 

As soon as you propose an assignment as a tenant, you should:

• review the existing lease to identify if the lease can be assigned;
• identify the requirements of landlord’s consent upon assignment; and
• correspond with the landlord or agent as to consent and approval of the proposed assignee under the lease. 

When seeking your landlord’s consent for the assignment, the proposed new tenant must usually provide their financial and business references to the landlord.

Can a Landlord Refuse to Assign a Retail Lease? 

If the lease is a retail lease, the landlord will not be able to withhold consent to an assignment unreasonably. The retail legislation (different in each state) provides the grounds on which the landlord can withhold their consent. These generally include the:

• assignee proposes to change the permitted use;
• assignee has financial resources or retailing skills that are inferior to the assignor, and
• assignor has not complied with the relevant steps, per the retail legislation in that particular state, including providing a disclosure statement.

Ensure that you check the retail legislation in that particular state when carrying out an assignment.

After obtaining the landlord’s consent, a deed of consent to assignment is prepared (deed of consent).

A deed of consent is a legal document that outlines that the:

• landlord confirms their consent to the transfer of lease;
• tenant agrees to transfer their entire interest in the lease to the assignee from a specific date (the assignment date); and
• assignee, or new tenant, agrees to assume the rights and obligations of the lease as if they were the original tenant (such as repairs, security and payment of rent and outgoings) from the assignment date. This will continue until the end of the lease term and during any option or renewal terms.

The Landlord

Generally, the landlord’s key concern is that the transfer does not affect their rights under the lease. The landlord can address this concern by ensuring that the original tenant (assignor) has complied with all of their obligations under the lease until the assignment date. The landlord will have the right to take action against the tenant after the assignment date for any existing breach of the lease. 

Additionally, the landlord will want to make sure that the assignee can comply with the lease obligations. This will often involve an assessment of the assignee as a tenant. The landlord will thoroughly examine the information before confirming their consent to the transfer. This might include: 

• financial statements; 
• business history; and 
• professional references. 

Finally, there is usually an agreement about who is liable for the costs of the deed of assignment. The landlord’s lawyer usually prepares the agreement. However, the outgoing tenant or the incoming tenant pays these costs, not the landlord.

The deed of assignment usually requires the assignee to give the relevant security and guarantees.

The Outgoing Tenant

As the outgoing tenant, your key concern is to be released from your obligations under the lease from the assignment date. The deed of assignment can address this concern by specifying that:

• the tenant is released from any claims or liabilities under the lease from the assignment date (provided that there is not an existing breach of the lease); and
• if the tenant has provided any security, it is to be returned or refunded.

It is important for you to remember that you are bound to the terms of the lease until the transfer of the commercial lease is formalised through the deed of assignment. Accordingly, you should continue to comply with your obligations under the lease until the assignment date.

On that note, a landlord might not agree to release you entirely from your obligations if the retail legislation in your state does not prevent this. This means that if the new tenant defaults, you could be responsible for fulfilling the lease obligations. In that case, you would need guarantees or an indemnity from the new tenant.

If the transfer of deed has to be registered, typically with retail leases, you (the assignor) usually organise the registration of the transfer, whose costs are divided with the new tenant  (the assignee).

The Assignee

The new tenant’s, or the assignee’s, key concern is for the landlord to accept the transfer of the commercial lease from the assignment date. The deed of assignment can address this concern by providing that:

• the landlord accepts the assignee as tenant from the assignment date;
• the landlord will observe their obligations specified in the lease in favour of the assignee; and
• if required in the relevant state, the parties sign a transfer of lease form and register the transfer at the land titles office.

The assignee should ensure that they have reviewed the contents of the commercial lease (including the disclosure statement if it is a retail lease). Then, they must review the lease before signing the deed of assignment. This is because the assignee will need to comply with the obligations of the tenant from the assignment date. These obligations may include the provision of security and a personal guarantee.

A personal guarantee is taken on by an individual to guarantee the obligations of another individual or entity. For example, the assignee providing may provide a personal guarantee where a particular party becomes a guarantor. If you cannot meet your obligations (such as to pay the lease), then the guarantor will have to meet that obligation themselves.

Before finalising the deed of assignment, it is important that the landlord, assignor and assignee agree on who bears the costs of preparing, negotiating and registering the deed of assignment. Generally, you, as the assignee, will bear the costs. However, you may choose to add a cap or exclude negotiation costs. 

If the lease you are transferring is a retail lease, the tenant will typically need to give the assignee a disclosure statement. This statement also includes details of any changes to the disclosure statement that the landlord provided when the lease was first entered into.

The disclosure statement outlines the vital information that the assignee needs to know, including the:

• current annual rent under the lease;
• current estimated outgoings payable under the lease;
• term of the lease and any options to renew; and
• details of the premises. 

Generally, the tenant may request an updated disclosure statement from the landlord before the transfer of the commercial lease. The landlord has an obligation to provide the updated disclosure statement, usually within 14 days from the date of the request.

The disclosure statement requirements differ between the states and territories. For example, in:

• New South Wales, the assignee must receive the disclosure statement at least seven days before the date of the transfer; and
• Victoria and Queensland, the assignee must receive the disclosure statement at least seven days before the assignor requests the landlord’s consent.

The consequences of failing to provide a disclosure statement also differ between the states and territories. For example, the assignee may:

• withhold payment of rent;
• seek compensation from the landlord; or
• terminate the lease within a specific timeframe.

It is essential for all parties to be aware of the requirements and consequences of the disclosure statement provisions in their particular state or territory.

Additionally, transferring a lease may also lead to stamp duty implications . Stamp duty is a tax imposed on the purchase of assets and transactions of property. Therefore, if you are transferring a lease, you will commonly have to pay stamp duty. It is important that you are aware of the circumstances where you, as a tenant, will be required to pay stamp duty.

A factsheet that sets out the three ways to end a commercial lease in Australia: surrendering your lease, assigning it or subletting it.

Whether you are a landlord, tenant or assignee, it is crucial that you understand your rights and obligations when transferring a commercial lease. Further, the transfer of a retail lease leads to additional requirements and consequences related to the disclosure statement. Finally, you need to be aware of the steps you should take to ensure a smooth assignment.

If you need assistance with drafting or reviewing the terms of a deed of assignment, our experienced leasing lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page .

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Deed of Assignment (for Intellectual Property)

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

• Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
• Date : The date on which the deed is executed should be clearly mentioned.
• Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
• Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
• Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
• Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
• Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
• Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
• Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
• Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
• Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.  

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment. 

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y. 

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

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Assignment Of Leases And Rents

Jump to section, what is an assignment of leases and rents.

The assignment of leases and rents, also known as the assignment of leases rents and profits, is a legal document that gives a mortgage lender right to any future profits that may come from leases and rents when a property owner defaults on their loan. This document is usually attached to a mortgage loan agreement.

Assignment of leases and rents allows lenders to a degree of financial protection in case a loan default occurs. This document is an agreement made between a borrower and a lender of mortgage loans. It often details an exact amount the lender will be entitled to if a default happens.

Common Sections in Assignments Of Leases And Rents

Below is a list of common sections included in Assignments Of Leases And Rents. These sections are linked to the below sample agreement for you to explore.

Assignment Of Leases And Rents Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.9 10 d368735dex109.htm ASSIGNMENT OF LEASES AND RENTS , Viewed October 4, 2021, View Source on SEC .

Who Helps With Assignments Of Leases And Rents?

Lawyers with backgrounds working on assignments of leases and rents work with clients to help. Do you need help with an assignment of leases and rents?

Post a project  in ContractsCounsel's marketplace to get free bids from lawyers to draft, review, or negotiate assignments of leases and rents. All lawyers are vetted by our team and peer reviewed by our customers for you to explore before hiring.

Meet some of our Assignment Of Leases And Rents Lawyers

Matthew grew up in Leawood, Kansas. He graduated from the University of Kansas with a Bachelor of Arts degree in Political Science and Communications in 2016 and from the University of Kansas School of Law in 2019 where he received a Business and Commercial Law Certificate. During his time as an undergraduate, he worked at a consulting firm focused on political campaigns and corporate public relations. In May of 2020, he will receive an MBA with a focus on finance from the University of Kansas Business School. Matthew is interested in several practice areas including business and commercial law, arbitration, and civil litigation. In his free time, Matthew enjoys playing basketball, using his virtual reality headset and listening to audiobooks.

Katherine V.

I am a skilled legal researcher and writer with a background in contract drafting and negotiation as well as litigation. I've served as an arbitrator for the past three years and have presided over nearly 400 binding arbitrations for an online dispute resolution platform. Additionally, I am a content writer and editor for the insurance division of LexisNexis. In my role as a contractor for LexisNexis, I research, draft, and edit high-quality legal reference tools on a variety of insurance topics for use by lawyers and insurance industry professionals.

hawuki attended SUNY Binghamton where he graduated with a Bachelor of Science in Marketing and Leadership & Consulting. Shawuki then went on to pursue his Juris Doctorate from Western Michigan University Thomas M. Cooley Law (WMU Cooley). During his time at WMU Cooley, Shawuki served as Justice of Phi Alpha Delta Law Fraternity, International, Vice President of Entertainment of Sports and Entertainment Law Society, and an Associate Editor of the Western Michigan University Thomas M. Cooley Journal of Practical and Clinical Law. At the conclusion of law school, Shawuki graduated with cum laude honors earning a spot on the Honor Roll and Dean's List. Professionally, Shawuki is an attorney/contract advisor and a serial entrepreneur. As the Managing Attorney of The Hilton Law Firm, PLLC, Shawuki has aided over a dozen startups and existing businesses with contractual, regulatory, administrative, and other legal matters. As a Canadian Football League (CFL) Contract Advisor, Shawuki has negotiated multiple player contracts, ensuring just compensation for his clients. Entrepreneurially, Shawuki is an owner of multiple businesses and has a wealth of business experience. Shawuki is a member of the Florida and District of Columbia Bar, Phi Alpha Delta Law Fraternity, International, Phi Delta Phi Legal Honor Society, and was recently named to the National Black Lawyers Top 40 under 40 list Florida.

My main focus is estate planning and business transactions, but I have had many practice areas throughout my career, including criminal defense and prosecution, civil litigation from neighborhood squabbles to corporate contentions. I have also worked in bankruptcy, family law, collections, employment law, and personal injury. I stand ready to assist in any area to which I feel I can be of service, but will not try to fake it if I do not know the area of law I am being asked to serve in.

Dawn K Kennedy has been licensed to practice law since 2015, but has been an entrepreneur since 2011. She uses her extensive project management and business background to support small and mid-sized businesses with contracts, negotiations, and other matters relating to the operation of a successful business venture.

With over 10 years experience as a Real Estate Broker and an attorney, I can help you with all your residential real estate needs such as For sale by owner transactions and drafting grant deeds

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• Housing, local and community
• Housing and communities
• Leases: when to register (PG25)

Practice guide 25: leases - when to register

Updated 7 March 2024

Applies to England and Wales

© Crown copyright 2024

This publication is licensed under the terms of the Open Government Licence v3.0 except where otherwise stated. To view this licence, visit nationalarchives.gov.uk/doc/open-government-licence/version/3 or write to the Information Policy Team, The National Archives, Kew, London TW9 4DU, or email: [email protected] .

Where we have identified any third party copyright information you will need to obtain permission from the copyright holders concerned.

This publication is available at https://www.gov.uk/government/publications/leases-when-to-register/practice-guide-25-leases-when-to-register

Please note that HM Land Registry’s practice guides are aimed primarily at solicitors and other conveyancers. They often deal with complex matters and use legal terms.

1. Introduction

The Land Registration Act 2002, together with the Land Registration Rules 2003, changes the categories of leases that are now either compulsorily or voluntarily registrable, and also the leases that we can note.

Not every leasehold estate is capable of being registered with its own title, but the Land Registration Act 2002 substantially extends the scope of title registration, for example, many more business leases will be subject to compulsory registration.

The information within this guide applies to:

• leases dated on or after 13 October 2003
• leases existing before 13 October 2003
• assignments, transfers (on sale, by way of gift or by order of court) or assents, including vesting assents, dated on or after 13 October 2003, of existing leasehold estates having more than seven years of the term left to run
• first legal mortgages dated on or after 13 October 2003
• giving effect to a partition of land subject to a trust of land
• by a deed that appoints, or by virtue of section 334 of the Charities Act 2011 has effect as if it appointed, a new trustee or is made in consequence of the appointment of a new trustee
• by a vesting order under section 44 of the Trustee Act 1925 that is consequential on the appointment of a new trustee.

See also practice guide 62: easements for details of the registration requirements in respect of easements granted in leases.

2. How to apply the Land Registration Act 2002 and Land Registration Rules 2003: compulsory registration

Section 4 of the Land Registration Act 2002 specifically sets out the circumstances when an application for first registration must be made.

The estate owner, or their successor in title, must apply for first registration – see section 6(1) of the Land Registration Act 2002.

The period for registration is two months from the date of the deed inducing registration – see section 6(4) of the Land Registration Act 2002. However, an order can be made to extend the period of registration – see section 6(5) of the Land Registration Act 2002.

Section 27(2)(b) of the Land Registration Act 2002 specifically sets out the circumstances when leases out of a registered title must be registered.

Section 4(5A) of the Land Registration Act 2002 exempts relevant social housing tenancies from compulsory registration, regardless of term.

2.1 New leases granted for a term of more than seven years out of unregistered land

See section 4(1)(c) of the Land Registration Act 2002.

Leases granted for a term of more than seven years from the date of the grant, out of either an unregistered freehold or leasehold estates, will be compulsorily registrable provided they are either:

• for valuable or other consideration – that under section 4(6) of the Land Registration Act 2002 includes estates that have a negative value
• grants for the purpose of setting up a trust, where the person setting up the trust, ‘the settlor’, does not retain the whole of the beneficial interest
• transfers of the legal title to the beneficial owners, where the settlor did not retain the whole of the beneficial interest when the trust was set up
• pursuant to an order of any court

2.2 New leases for a term of more than seven years out of a registered title

See section 27(2)(b)(i) of the Land Registration Act 2002.

Leases granted out of existing registered titles, that are for a term of more than seven years from the date of the grant are compulsorily registrable.

2.3 Transfers or assignments of unregistered leases having more than seven years of the term unexpired

See sections 4(1)(a), 4(1)(aa) (as introduced by the Land Registration Act 2002 (Amendment) Order 2008) and 4(2)(b) of the Land Registration Act 2002.

Transfers or assignments of unregistered leases, that at the time of the transfers (or assignments) have more than seven years to run, are compulsorily registrable if they are made either:

• transfers for the purpose of setting up a trust, where the person setting up the trust, ‘the settlor’, does not retain the whole of the beneficial interest
• by means of an assent – including a vesting assent
• to give effect to a partition of land subject to a trust of land
• by a deed that appoints, or by virtue of section 334 of the Charities Act 2011 has effect as if it appointed, a new trustee or that is made in consequence of the appointment of a new trustee
• by a vesting order under section 44 of the Trustee Act 1925 that is consequential on the appointment of a new trustee

Note: Not all transfers or assignments attract compulsory registration.

The following are specific types of transfer or assignment that are not subject to compulsory registration

• however, a transfer by operation of law that is within section 4(1)(aa) of the Land Registration Act 2002, such as, when property vests in a new trustee by an express vesting declaration, or one that is implied, under section 40 of the Trustee Act 1925 in a deed appointing a new trustee, is subject to compulsory registration
• an assignment of a mortgage term, ie mortgage by demise – see section 4(4)(a) of the Land Registration Act 2002
• an assignment or surrender of a lease to the owner of the immediate reversion where the term is to merge into that reversion – see section 4(4)(b) of the Land Registration Act 2002

2.4 Transfers or assignments of unregistered leases where section 171A of the Housing Act 1985 applies

See section 4(1)(b) of the Land Registration Act 2002.

All transfers of unregistered leases, irrespective of the length of the term of the lease, made pursuant to section 171A of the Housing Act 1985 (Preserved Right to Buy) are compulsorily registrable.

2.5 Transfers of any registered leases

See section 27(2)(a) of the Land Registration Act 2002.

Most transfers of registered leases, irrespective of the length of the term of the lease, are compulsorily registrable. However, the following transfers by operation of law are not required to be registered:

• a transfer on the death or bankruptcy of an individual proprietor
• a transfer on the dissolution of a corporate proprietor

2.6 Right to buy leases: Part V of the Housing Act 1985

See sections 4(1)(e) and 27(2)(b)(iv) of the Land Registration Act 2002.

All leases, irrespective of the length of the term of the lease, made pursuant to Part V of the Housing Act 1985 are compulsorily registrable.

2.7 Leases where section 171A of the Housing Act 1985 applies

See sections 4(1)(f) and 27(2)(b)(v) of the Land Registration Act 2002.

All leases, irrespective of the length of the term of the lease, made pursuant to section 171A of the Housing Act 1985 (Preserved Right to Buy) are compulsorily registrable.

2.8 Reversionary leases taking effect more than three months from the date of the grant

See sections 4(1)(d) and 27(2)(b)(ii) of the Land Registration Act 2002.

A ‘reversionary’ lease gives the lessee a right to possession of the leased property in the future, ie the lessee does not have an immediate right to possession of the land in the lease, at the date of the lease.

A lease granted out of either an:

• unregistered leasehold estate, that at the date of grant has more than seven years left to run
• unregistered freehold estate
• existing registered title

that is granted for any term to take effect more than three months from the date of the grant is compulsorily registrable.

2.9 Discontinuous leases out of registered titles or granted for a term of more than seven years out of unregistered land

See section 27(2)(b)(iii) of the Land Registration Act 2002.

These are leases where the lessee’s ‘right to possession’ of the land demised is discontinuous. The lease may be of a property, such as, a flat, apartment or market stall, that is for either:

• a specified number of days in a week, for example, every Monday to Friday (inclusive)
• a specific week(s) in a calendar year

All discontinuous leases granted out of a registered title must be registered, regardless of the term.

Discontinuous leases granted for a term of more than seven years out of unregistered freehold or leasehold estates will be compulsory registrable.

See sections 4(1)(c) and 4(2)(b) of the Land Registration Act 2002 and see New leases granted for a term of more than seven years out of unregistered land .

To calculate the length of the term on such a lease, multiply the number of complete weeks each year the property is demised by the number of years granted.

If the total is more than seven years (ie more than 364 complete weeks), the lease and/or transfer will be compulsorily registrable.

2.10 Protected first legal mortgage

See sections 4(1)(g) and 4(2)(b) of the Land Registration Act 2002 and rules 21 and 22 of the Land Registration Rules 2003.

A protected first legal mortgage of an unregistered leasehold estate, that has more than seven years of its term unexpired, is subject to compulsory first registration. In order for such a mortgage to be registered, the leasehold estate will also need to be registered. Rule 21 of the Land Registration Rules 2003 allows a mortgagee of a protected first legal mortgage to apply to have the leasehold estate registered, whether or not the mortgagor consents to the application.

Note 1: A ‘protected mortgage’ is a mortgage that is protected by the deposit of documents relating to the mortgaged estate – see section 4(8)(a) of the Land Registration Act 2002.

Note 2: A ‘first legal mortgage’ is a legal mortgage that ranks in priority over all other mortgages affecting the mortgaged estate – see s.4(8)(b) of the Land Registration Act 2002.

3. How to apply the Land Registration Act 2002 and Land Registration Rules 2003: voluntary registration

Section 3 of the Land Registration Act 2002 gives details of when an application can be made to voluntarily register an unregistered leasehold estate.

Section 3(4A) of the Land Registration Act 2002 specifically excludes relevant social tenancies from being eligible for voluntary registration.

The following sections mainly apply to leases that are made before 13 October 2003 and when no events requiring registration have occurred. However, some of the sections will also apply to some leases that are granted on or after 13 October 2003, that can be registered but may not be subject to compulsory registration. For example, see Discontinuous leases out of unregistered land .

The following sections give details of the leasehold estates in land that can be lodged voluntarily for first registration.

3.1 Leases having more than seven years of their term unexpired

See section 3(3) of the Land Registration Act 2002.

Most leases will be accepted for registration, provided there is more than seven years of the original term left unexpired at the time of first registration. If the lease is granted on or after 13 October 2003 it will be subject to compulsory registration – see New leases granted for a term of more than seven years out of unregistered land .

Where a lessee holds a lease in possession but is granted another lease of the same land, to take effect in possession on or within one month of the expiry of the first lease, the two terms can be treated as creating one continuous term – see section 3(7) of the Land Registration Act 2002. Therefore, if the two terms total more than seven years, we will accept a voluntary application for registration of both leases, that will be registered together on the same title.

Note: Section 3(7) of the Land Registration Act 2002 only provides that such leases can be treated as creating one continuous term for the purposes of voluntary registration. There is no provision that such leases are to be treated as one continuous term for the purposes of compulsory registration.

3.2 Discontinuous leases out of unregistered land

See section 3(4) of the Land Registration Act 2002. This provision is new under the Land Registration Act 2002.

See Discontinuous leases out of registered titles or granted for a term of more than seven years out of unregistered land as to what constitutes a ‘discontinuous’ lease, and how to calculate the length of the term of the lease.

A voluntary application will be accepted, regardless of the length of the term, ie the lease does not have to be for more than seven years (364 weeks). However, if a discontinuous lease is granted on or after 13 October 2003, or a transfer of a discontinuous lease is made on or after 13 October 2003, it must be registered if it falls within sections 4(1)(c) and 4(1)(a) of the Land Registration Act 2002 – see New leases granted for a term of more than seven years out of unregistered land and Transfers or assignments of unregistered leases having more than seven years of the term unexpired .

If the total is more than seven years (ie more than 364 complete weeks) the lease and/or transfer will be compulsorily registrable.

4. How to apply the Land Registration Act 2002 and Land Registration Rules 2003: leases that cannot be registered

Section 3(5) of the Land Registration Act 2002 specifically details when we cannot accept an application to register a leasehold estate, ie if the estate owner (the applicant) has the leasehold estate vested in them as a mortgagee, where there is a subsisting right of redemption.

The following sections give details of the leasehold estates in land that cannot be lodged for registration.

4.1 Leases granted for a term of seven years or less or where the unexpired term is for seven years or less

Unless they fall into one of the exceptions below, which are registrable regardless of their term, the following leases are not registrable (Sections 3(3), 4(1)(c) and 27(2)(b)(i) of the Land Registration Act 2002).

(i) Leases out of registered or unregistered land, where the term unexpired at the date of the grant is 7 years or less.

(ii) Unregistered leasehold estates subject to transfer or assignment which have 7 years or less of the term unexpired at the date of the disposition.

(iii) Applications for voluntary first registration of a leasehold estate where the unexpired portion of the term is 7 years or less at the date of the application.

Note: The following are exceptions to this and these leases can be registered irrespective of their term.

• right to buy leases, pursuant to Part V of the Housing Act 1985
• preserved right to buy leases pursuant to section 171A of the Housing Act 1985
• discontinuous leases
• an unregistered freehold estate
• an unregistered leasehold estate in land for a term that at the time of the grant of the lease has more than seven years left to run
• a registered title.

Note: Some of these leases are compulsorily registrable. See How to apply the Land Registration Act 2002 and Land Registration Rules 2003: compulsory registration for further details.

4.2 Lease term starts more than 21 years from date of lease

Usually a lease for which a rent or premium is payable where the term starts more than 21 years from the date of the lease is void – see section 149(3) of the Law of Property Act 1925. Therefore, such leases cannot be registered.

4.3 Leases with no certain start date

If the lease is silent as to the commencement date, we will normally assume (in the absence of other evidence) the term commences on the date of the lease.

4.4 Lessor and lessee are the same

The House of Lords decided that neither one person, nor a company, can create a lease in favour of the same person or company. Any attempt to do so is without legal effect (Rye v Rye [1962] A C 496). Therefore, we cannot give any kind of registered title to such a lease.

4.5 Public-Private Partnership ( PPP ) leases

A PPP lease is a lease that constitutes a ‘public-private partnership’ agreement – see sections 210 and 211 of the Greater London Authority Act 1999.

The lease will usually be between London Regional Transport, Transport for London or one of its subsidiaries and a private company, for the purpose of maintaining or providing a railway, such as, an underground railway.

PPP leases are not registrable - see sections 90(1), (2) and (3) of the Land Registration Act 2002.

They are classed as an interest that overrides both first registration and registered dispositions – see section 90(5) of the Land Registration Act 2002.

4.6 Leases vested in a person as a mortgagee: subsisting right of redemption

See section 3(5) of the Land Registration Act 2002.

A lease vested in a person as mortgagee where there is a subsisting right of redemption cannot be registered.

4.7 Relevant social housing tenancies

See sections 3(4A), 4(5A) and 27(5A) of the Land Registration Act 2002.

A relevant social housing tenancy (as defined in section 132(1) of the Land Registration Act 2002) cannot be registered.

5. How to apply the Land Registration Act 2002 and Land Registration Rules 2003: noting of leases

See sections 32, 33, 34, 37 and 38 of the Land Registration Act 2002.

Section 32 of the Land Registration Act 2002 allows us to note certain leases against the registered estate affected, ie lessor’s title.

5.1 Noting of leases granted out of registered titles on or after 13 October 2003

When an application is lodged for registration of a lease granted out of registered land that is required to be registered (see How to apply the Land Registration Act 2002 and Land Registration Rules 2003: compulsory registration for further details) no application is required to note the lease on the lessor’s registered title. Notice will automatically be entered in the lessor’s title by HM Land Registry, pursuant to section 38 of the Land Registration Act 2002.

5.2 Noting of leases on lessors’ registered superior titles following first registration

See rule 37 of the Land Registration Rules 2003.

An application to register a lease that was either:

• not granted out of a registered estate
• granted before the commencement of Land Registration Act 2002
• and was not previously compulsorily registrable (such as, a lease of more than seven years but for 21 years or less)

will be treated as an application for first registration.

Provided the lease can be noted – see Leases that we cannot note – HM Land Registry will automatically note the lease in the lessor’s registered superior title (if it is not already noted), subject to serving notice on the lessor – see rule 37(3) of the Land Registration Rules 2003. If the lessor’s consent is lodged with the application we will not need to serve notice on the lessor.

5.3 Noting of leases for more than three years

If a notice is not automatically made in the lessor’s title under section 38 of the Land Registration Act 2002 or rule 37(3) of the Land Registration Rules 2003 an application may be made for a notice to be entered if the lease:

• is granted for a term of more than three years from the date of the grant
• does not relate to a trust of land or a settlement under the Settled Land Act 1925

See sections 32, 33 and 34 of the Land Registration Act 2002.

See How to apply the Land Registration Act 2002 and Land Registration Rules 2003: compulsory registration , for details of leases that must be registered.

See Noting of leases for details on how an application is made.

Section 37 of the Land Registration Act 2002 also allows HM Land Registry to note leases of more than three years but not exceeding seven years in a registered superior title, even though the lease itself will be incapable of substantive registration.

5.4 Leases that we cannot note

See section 33 of the Land Registration Act 2002.

We cannot note the following in the register. Leases that are:

• See How to apply the Land Registration Act 2002 and Land Registration Rules 2003: compulsory registration , for details of leases that must be registered
• Note: This applies to any discontinuous leases that are not compulsorily registrable, where the total period is three years or less.
• Public–Private Partnership leases – see section 90(4) of the Land Registration Act 2002
• relevant social housing tenancies – see section 33(ba) of the Land Registration Act 2002

6. How to apply the Land Registration Act 2002 and Land Registration Rules 2003 and make applications to HM Land Registry

Original documents are normally required only if your application is a first registration.

A conveyancer may, however, make an application for first registration on the basis of certified copy deeds and documents only. For information about this, see practice guide 1: first registrations – Applications lodged by conveyancers – acceptance of certified copy deeds .

If your application is not a first registration, then we will need only certified copies of deeds or documents you send to us with HM Land Registry applications. Once we have made a scanned copy of the documents you send to us, they will be destroyed. This applies to both originals and certified copies.

However, any original copies of death certificates or grants of probate will continue to be returned.

6.1 First registration

The estate owner or their successor in title should apply for first registration – see section 6(1) of the Land Registration Act 2002.

The period for registration is two months from the date of the deed inducing registration – see sections 6(4) and (5) of the Land Registration Act 2002.

Applications must be lodged in form FR1 – see rule 23(1) of the Land Registration Rules 2003.

Rule 24, of the Land Registration Rules 2003 gives details of what must accompany an application for first registration, that is:

• sufficient details, by plan or otherwise, so that the land can be identified clearly on the Ordnance Survey map
• Note 1: If the plan, or sufficient details to identify the land, are included in the lease, a further plan will not be required
• Note 2: If the lease is a discontinuous lease, a copy of any ‘timeshare’ calendar defining the weeks referred to will be required, if it is not included in the lease

evidence that Stamp Duty Land Tax certificate (SDLT) or Land Transaction Tax (LTT) requirements have been met

• all deeds and documents relating to the title that are in the control of the applicant

Note: If absolute leasehold is requested in form FR1 and the evidence of the superior title(s) is not lodged, we will only register the applicant with good leasehold title. We will not raise a requisition for this evidence.

• a list in duplicate in form DL of all the documents delivered.

For more general information on lodging an application for first registration see practice guide 1: first registrations .

Advice on whether a particular transaction:

• requires to be notified to HM Revenue & Customs (HMRC) or the Welsh Revenue Authority (WRA) is exempt from SDLT or LTT (such as a legal charge)
• falls outside the scope of SDLT or LTT

can be obtained from:

• for SDLT, the HMRC stamp taxes helpline on 0300 200 3510, open 8.30am to 5pm Monday to Friday except public holidays or HMRC’s stamp taxes website
• for LTT: the WRA customer service centre on 03000 254 000, open 9.30am to 5.30pm Monday to Friday except public holidays or the WRA’s website

If the lease is granted to two or more persons and it either does not contain details, or contains conflicting information, as to whether a Form A restriction (see Schedule 4 to the Land Registration Rules 2003) is required, we will enter a restriction in Form A by default. If the lease is granted on or after 19 June 2006 and contains the prescribed clauses, a declaration of trust is contained in clause LR14. For further information see practice guide 24: private trusts of land .

Any restrictions, other than a Form A restriction, must be applied for in form RX1 – rule 92 of the Land Registration Rules 2003. For further information see practice guide 19: notices, restrictions and protection of third party interests . A restriction cannot be applied for in a lease however, from 9 January 2006, a lease containing clauses LR1 to LR14 of Schedule 1A, to the Land Registration Rules 2003 may be used, at clause LR13, to apply for entry of a standard form restriction. This will include prescribed clauses leases granted on or after 19 June 2006. An application for a non-standard restriction must always be made in form RX1. For further information see practice guide 64: prescribed clauses leases – section 5.13 LR13.

A leasehold register will include sufficient details of the lease being registered to enable it to be identified – see rule 6 of the Land Registration Rules 2003. Such details will no longer include any reference to the rent payable under a lease.

6.2 New leases out of a registered title

These applications must be lodged in form AP1 – rule 13 of the Land Registration Rules 2003.

A certified copy of the lease and the appropriate fee under the current Land Registration Fee Order must accompany the application (see HM Land Registry: Registration Services fees ).

The lease, if granted on or after 19 June 2006, must be a prescribed clauses lease. For further information, see practice guide 64: prescribed clauses leases .

The lease must be accompanied by evidence that SDLT or LTT requirements have been met.

If the lease is lodged for registration by a conveyancer who only represents the lender, we will require written confirmation from the conveyancer representing the tenant stating:

the address for service to be entered on the register; and

that, if the application was lodged by them on behalf of the tenant, they would be sufficiently satisfied they can provide the necessary confirmation of identity required by panels 12 and 13 of form AP1

If there is a mortgage registered on the landlord’s title you will need to enclose the consent of the mortgagee. Consent is always required where there is also a restriction in favour of the lender on the landlord’s title which ‘catches’ the lease application. Otherwise where the consent is not lodged, we will make the following entry in the property register of the new title:

“The title to the lease is, during the subsistence of the charge dated ….. in favour of ….. affecting the landlord’s title (and to the extent permitted by law, any charge replacing or varying this charge or any further charge in respect of all or part of the sum secured by this charge), subject to any rights that may have arisen by reason of the absence of chargee’s consent, unless the lease is authorised by section 99 of the Law of Property Act 1925.”

If the landlord’s title is leasehold enclose the consent of any superior landlord, if the superior lease requires such consent to be obtained. Where the consent of the superior landlord is not lodged we will make the following entry in the property register of the new title unless a conveyancer certifies that the new lease falls in a permitted category and is not caught by the terms of the alienation clause in the superior lease:

“The registrar has not seen any consent to the grant of this sub-lease that the superior lease out of which it was granted may have required.”

If the lease is granted to two or more persons and it either does not contain details, or contains conflicting information, as to whether a Form A restriction (see Schedule 4 to the Land Registration Rules 2003) is required, we will enter a restriction in Form A by default. If the lease is a prescribed clauses lease a declaration of trust is contained in clause LR14. For further information see practice guide 24: private trusts of land .

Any restrictions, other than a Form A restriction, must be applied for in form RX1 – rule 92 of the Land Registration Rules 2003. For further information see practice guide 19: notices, restrictions and protection of third party interests . A standard restriction cannot be applied for in a lease. However, from 9 January 2006, a lease containing clauses LR1 to LR14 of Schedule 1A to the Land Registration Rules 2003 may be used, at clause LR13, to apply for entry of a standard form restriction. This will include prescribed clauses leases granted on or after 19 June 2006. Form RX1 must continue to be used to apply for entry of a restriction contained in any other lease, or for entry of a non-standard form restriction. For further information see practice guide 64: prescribed clauses leases – section 5.13 LR13.

6.3 Noting of leases

See sections 33, 34 and 35 of the Land Registration Act 2002.

Note: Application to note a lease as an agreed or unilateral notice will not fulfil the registration requirements for legal easements. If the lease contains easements you should apply as directed in practice guide 62: easements – 4.2 Easements in unregistered leases.

6.3.1 Agreed notices

If a lease is not automatically noted under section 38 of the Land Registration Act 2002 or rule 37 of the Land Registration Rules 2003, and is not prevented from being noted (see Leases that we cannot note ), an application may be made for an agreed notice to be entered in the register affected by the interest by either:

• the person entitled to the benefit of the interest
• the registered proprietor of the land in which the notice is to be entered
• a person entitled to be registered as such proprietor, such as the personal representative of a sole registered proprietor

Such an application should be accompanied by:

• evidence that SDLT or LTT requirements have been met

Note: Before we can note any land transaction as an agreed or unilateral notice, HM Land Registry is obliged to ensure that the appropriate SDLT or LTT certificate accompanies the application where this is required. This is a statutory requirement under section 79(1) of the Finance Act 2003 and s.65(1) of the Land Transaction Tax and Anti-avoidance of Devolved Taxes (Wales) Act 2017. See First registration for details.

• if the application is by a person entitled to be registered as proprietor, sufficient evidence to satisfy us of their interest
• if the application is not made by the registered proprietor or a person entitled to be registered as such proprietor, either the consent of such person, or sufficient evidence to satisfy the registrar as to the validity of the claim
• any appropriate consents of restrictioners

For further details see practice guide 19: notices, restrictions and protection of third party interests .

6.3.2 Unilateral notices

It may be possible to make an application for a unilateral notice to be entered on the lessor’s title when an agreed notice cannot be entered. For further details see practice guide 19: notices, restrictions and protection of third party interests .

6.3.3 Leases with less than one year to run

We will not note leases with less than one year to run. This is because, in the registrar’s view, entering notice of such a lease in the register is likely to cause inconvenience to HM Land Registry and our customers as application would have to be made within a year for its removal.

6.4 Deeds of variation

6.4.1 variation of a registered lease.

If lodging an application to register the variation of a lease when the lessee’s title is registered, it will usually be appropriate to make the application under rule 129 of the Land Registration Rules 2003, and, therefore, the application should be lodged in form AP1 – rule 13 of the Land Registration Rules 2003.

Under rule 129 of the Land Registration Rules 2003 you must provide sufficient evidence to show that the variation has effect at law. You must, therefore, lodge:

• the deed of variation, and
• consent(s) of any chargee or restrictioner if required, or
• where the lessor’s title is unregistered – evidence of the lessor’s title, and
• any other evidence to show that the variation has effect at law, such as, evidence of change of name of one of the parties if the name is not the same as that shown on the register

If we are satisfied that the variation has effect at law we will make an entry relating to the deed in the property register of the lessee’s title. We will also enter a notice in the lessor’s title, without a specific application being made in form AN1 in respect of the lessor’s title.

Note: If the chargee’s consent is not lodged when required, the following will be added to the register entry of the relevant titles:

“NOTE: The proprietor of the registered charge dated […] [of the landlord’s/tenant’s title number …] was not a party to the deed nor was evidence of its consent to the deed produced to the registrar.”

6.4.2 Variation of an unregistered lease

If notice of an unregistered lease is entered in a lessor’s title, an application may be made to enter a notice in respect of a variation of the lease. Such an application should usually be made for an agreed notice in form AN1 , if the deed of variation can be provided and the lease is already protected as an agreed notice. However, it may be appropriate in some circumstances to make an application in form UN1 , for example if the lease is already protected by way of unilateral notice and the lease or/and the deed of variation cannot be provided. For further details see practice guide 19: notices, restrictions and protection of third party interests .

Please note that where an application is being made for an agreed or unilateral notice following a deed of variation, the application can be made in respect of the lessor’s title only. This is because, under section 32(1) of the Land Registration Act 2002, a notice is an entry in the register “in respect of the burden of an interest affecting a registered estate”. The lease is clearly an interest burdening the lessor’s registered estate and so can be the subject of a notice in the lessor’s title; it can be argued that any deed of variation can also be noted as the entry is then “in respect of” this burden. But the lease is not an interest affecting the lessee’s estate: it is their estate. So the lease cannot be the subject of a notice in the lessee’s title; and nor, as a result, can the deed of variation be the subject of such a notice.

6.4.3 Application to note variation where it is not clear that the variation takes effect at law

It may be appropriate in some cases to apply for a notice in either:

in respect of a deed of variation even when the lease is substantively registered, as sufficient evidence may not be able to be provided to satisfy the registrar that the variation takes effect at law. For further details see practice guide 19: notices, restrictions and protection of third party interests .

Note: If the deed of variation contains easements, these will not operate at law until entries relating to the burden and benefit of the easement are entered in both registered titles – see section 27(1) and paragraph 7 of Schedule 2 to the Land Registration Act 2002.

6.4.4 Variation of term or extent

Although it is clear in law that the term of a lease cannot be extended by deed, deeds of variation are frequently encountered that purport to either

• extend the length of a lease
• increase the land demised

You should avoid using a deed of variation in such circumstances.

However, if these deeds are lodged for registration, we will treat them as an immediate surrender of the old lease and the grant of the new lease. A deed varying a lease that takes effect as a surrender and re-grant of the leasehold estate does not have to be a prescribed clauses lease. This exception applies whether or not the original lease was a prescribed clauses lease. For further details see practice guide 28: extension of leases .

For guidance on how to correct the extent demised by the lease or the length of the term, see practice guide 68: amending deeds that effect dispositions of registered land – section 4.4 Leases: Incorrect extent to term demised.

7. Preliminary service applications

7.1 first registration.

For further details see:

• practice guide 1: first registrations
• practice guide 10: official search of the index map

Note: If you do not require indemnity provisions in respect of an index map search you could consider using MapSearch . This service is available free of charge for Business e-services customers who have portal access and provides immediate search results.

7.2 Lease out of a registered title

• practice guide 11: inspection and applications for official copies
• practice guide 12: official searches

Note: If you are lodging an official search of part affecting a discontinuous lease, ensure you include details of any particular time period as well as the property details, such as, ‘Apartment 6 for Week 27’.

8. Things to remember

Always check that you have:

• form FR1 for a first registration
• form AP1 for a lease out of a registered title
• first registration – where the reversionary title is registered and absolute leasehold title has been requested
• lease out of a registered title – consents in respect of any restrictions in the proprietorship register or charges in the charges register of the lessor’s title. If the landlord’s title is leasehold - consider, do they need to get the consent of their landlord under the terms of the lease?
• discontinuous or timeshare lease – is there a copy of the timeshare calendar in the lease, or do you need to lodge one separately
• lodged a certified copy of the lease
• lodged a form RX1 if applying for any restrictions
• lodged the correct fee (see HM Land Registry: Registration Services fees )
• checked clerical details in all forms and deeds (especially charges and mortgages) and paid particular attention to all dates, property descriptions, title numbers, and full names of parties, especially where they appear in more than one deed.

We only provide factual information and impartial advice about our procedures. Read more about the advice we give .

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Assignment of lease

ADIS Code -  LASS

An assignment of lease, including a sub-lease, is a transfer of the lease by the lessee, ie the assignor, to a new lessee, ie the assignee. The lessor is usually not a party to the assignment.

The affected lease or sub-lease is not required. For an assignment of a lease affecting Kosciuszko National Park .

Lodgment requirements

Stamp duty -  Required. If not marked Registration insisted upon , is prohibited.

Any alteration to the term or rent must be marked.

Registration copy - Required. If unacceptable, Registration insisted upon  is prohibited.

Statement of Title Particulars form  - Not required.

NOS form  - Not required.

Index Particulars form (completion)

(A) Lodging Party - Must be completed.

(B) Instrument - Lease - Assignment of

(C) Locality -  Not required.

Link Conveyance - Not required.

Principal Deed - The registered affected lease or sub-lease.

(D) Indexing -  The assignor and the assignee, and the sub-lessor for an assignment of a sub-lease.

(E) Certification -  Required.

Document requirements 

Date: must be dated with the date of execution. If not dated advise the lodging party. If a date is not furnished, indicate Registration insisted upon  and include the reason.

Name: the full names (initials are acceptable) of the assignor and the assignee are required. Advise the lodging party of any discrepancies in names.

Operative clause: "... hereby assigns...".

Principal Deed: the number of the affected lease or sub-lease as stated in the assignment must be identical to the number stated on the IPF. If affecting a sub-lease, the head lease number is also required.

Execution: by the assignor. A power of attorney must be registered, The assignee does not have to sign.

Attestation: required. Must be witnessed by a person of 18 years of age or older who is not a party to the document.

IPF: must be completed.

Staff processing information

A Deeds search may be made for the head lease number.

CA Not required

Locality: nil.

Link Conveyance: nil.

Principal Deed: required. The registered number of the lease or sub-lease being assigned, and the registered number of the head lease for an assignment of a sub-lease.

Noting: "Affecting [description of the land]".

If the assignment affects:

• an interest, state: "interest in" (or Noting Code: "I"
• a share, state: "[fraction] share"
• part of the land, state: "[affected land description]"
• the land description relies on an attached plan, state: "see attached plan" (or Noting Code: "PL").

V: the assignor, and the sub-lessor for an assignment of a sub-lease, deceased estates or trusts, and any variations thereof.

P: the assignee, deceased estates or trusts, and any variations thereof.

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The Importance of Registering a Lease Assignment in the UK

By Paul Loccisano Senior Associate

Updated on 25 September 2023 Reading time: 5 minutes

This article meets our strict editorial principles. Our lawyers, experienced writers and legally trained editorial team put every effort into ensuring the information published on our website is accurate. We encourage you to seek independent legal advice. Learn more .

• Assignment  

Registering a Lease Assignment

Key takeaways, frequently asked questions.

A cornerstone provision in commercial lease agreements is the lease term. The lease term refers to the time period in which the commercial tenant agrees to occupy commercial premises. Commercial tenants, for a host of reasons, may need to exit their commercial lease sooner than they anticipated. Lease assignment is one of the most common ways for commercial tenants to exit their lease early . Commercial tenants, via this method, obtain their landlord’s consent to transfer the existing lease to another business owner. This article will explain the importance of registering a lease assignment in the UK.

Assignment  

Commercial lease assignment is when a tenant transfers their existing lease to a new tenant. The existing tenant is the outgoing tenant or assignor, and the incoming tenant is the assignee. Lease assignment means that the commercial lease does not end but the tenant is merely substituted. The assignee takes on all the outgoing tenant’s lease obligations and enjoys the tenant’s rights in the lease agreement. Ultimately, the incoming tenant will enjoy sole possession of the commercial property as their commercial premises. The incoming tenant will also start making rent payments for the commercial property.

The assignor starts the process of lease assignment. Leases between the outgoing tenant and the landlord which have less than several years before the conclusion of the lease term will need to go through a formal process of assignment. The assignor will need to execute a deed of assignment to transfer the lease to the incoming tenant.

The assignor or the assignee may need to register a lease assignment. The assignor or assignee may be required to register the lease assignment instead of using a deed of assignment. A lease assignment will generally need to be registered in two instances. The assignor will need to register the lease assignment if the commercial lease has seven years or more left on the lease term.

Also, the assignor is required to register the lease assignment if the lease has already been registered with the HM Land Registry Office . They must complete and submit a TR1 form to the HM Land Registry Office for a lease assignment to be valid. Once the Land Registry receives this, they will process the lease assignment and place the incoming tenant’s name as the titleholder to the lease in the Land Register. 

Importance of Registering a Lease Assignment

When you enter or exit a commercial lease through assignment, the process of registering the lease assignment is a crucial part of assigning a lease. This is because until this is complete, the assignee is not legally the new tenant for the commercial lease. Therefore, the lease assignment process is not fully complete. The assignor’s failure to register the lease assignment with the Land Registry Office adversely impacts the assignee. Due to the lease assignment process not being legally complete, the assignee has none of the rights usually granted to them in a commercial lease. The assignee will not have the right to sole occupation of the commercial premises. The assignor will also continue to be responsible for all the lease obligations in the commercial lease agreement. Had the lease assignment been validly registered, the assignee would be responsible for the lease obligations thereafter.

It is essential to have a solicitor to see you through the lease assignment process. The outgoing tenant’s solicitor will usually draft the transfer for the Land Registry Office. However, you as the assignee will want your solicitor to confirm the lease assignment is correct and complete.

Land registration is time-consuming. The assignor should register the lease assignment as soon as possible. Legal rules concerning the timeframe for registration of a lease assignment also impact the expediency of registering land. As the assignor, you can only register the lease assignment for up to two months from the lease completion date. The law will deem the lease to be void if not registered within this timeframe. You are then reliant on a discretionary agreement with the Land Registrar. The Land Registrar may extend the timeframe for you to register the lease with the use of an order.

Break Clause Within a Commercial Lease

It is important for the assignor to register the lease assignment with the Land Registry Office. The assignor’s act of registering the lease assignment ensures the law considers the lease assignment process to be complete. Further, the assignor registering the lease assignment protects the incoming tenant’s ability to rely on a break notice provision in the commercial lease agreement. A break clause simply allows the incoming commercial tenant to terminate the lease agreement before the lease term ends. The assignor typically needs to register the commercial lease assignment for the incoming tenant to rely on the break clause.

If the assignor has not registered the lease assignment with the Land Registry Office, the incoming tenant will be left in a precarious position. The assignee may need to end the lease early but cannot rely on the break clause. 

This cheat sheet outlines what you should be aware of in your lease agreement.

Lease assignment is where commercial lease transfers from the existing commercial tenant to a new tenant. The assignor must register the lease assignment with the Land Registry Office in two situations. Where the commercial lease being assigned has seven years or more left on the lease term, the lease assignment will need to be registered. Likewise, registration of a lease assignment is required if the commercial lease is registered. Registration of a lease assignment is essential for assigning a commercial lease. Without it, the assignment is not legal, and it is crucial that registering the lease assignment is done within the correct time frame. Registering a lease assignment may also allow the assignee to exercise the break clause in the lease agreement if necessary. 

If you need help understanding the importance of registering a lease assignment in the UK, contact our experienced leasing lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page .

Lease assignment is where the existing tenant to a commercial lease, the assignor,  transfers it to a new tenant, the assignee. The lease continues between the assignee and the current commercial landlord.

Registering a lease assignment is often part of the lease assignment process and requires a TR1 form to be completed with the Land Registry Office.

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Related articles

Benefits of Engaging a Property Solicitor When Leasing Commercial Property in the UK

4 Ways to End Your Commercial Lease Early in the UK

Assigning vs Subletting Your Commercial Lease in the UK

Five Key Points a UK Commercial Tenant Should Look Out for When Signing a Lease Agreement 

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Stamp duty land tax and Land Registry requirements for assignments of leases

Registering an assignment of a lease at the land registry.

UK: The importance of registering a lease assignment in the UK

A cornerstone provision in commercial lease agreements is the lease term. The lease term refers to the time period in which the commercial tenant agrees to occupy commercial premises. Commercial tenants, for a host of reasons, may need to exit their commercial lease sooner than they anticipated. Lease assignment is one of the most common ways for commercial tenants to exit their lease early . Commercial tenants, via this method, obtain their landlord's consent to transfer the existing lease to another business owner. This article will explain the importance of registering a lease assignment in the UK.

Commercial lease assignment is when a tenant transfers their existing lease to a new tenant. The existing tenant is the outgoing tenant or assignor, and the incoming tenant is the assignee. Lease assignment means that the commercial lease does not end but the tenant is merely substituted. The assignee takes on all the outgoing tenant's lease obligations and enjoys the tenant's rights in the lease agreement. Ultimately, the incoming tenant will enjoy sole possession of the commercial property as their commercial premises. The incoming tenant will also start making rent payments for the commercial property.

The assignor starts the process of lease assignment. Leases between the outgoing tenant and the landlord which have less than several years before the conclusion of the lease term will need to go through a formal process of assignment. The assignor will need to execute a deed of assignment to transfer the lease to the incoming tenant.

Registering a Lease Assignment

The assignor or the assignee may need to register a lease assignment. The assignor or assignee may be required to register the lease assignment instead of using a deed of assignment. A lease assignment will generally need to be registered in two instances. The assignor will need to register the lease assignment if the commercial lease has seven years or more left on the lease term.

Also, the assignor is required to register the lease assignment if the lease has already been registered with the HM Land Registry Office . They must complete and submit a TR1 form to the HM Land Registry Office for a lease assignment to be valid. Once the Land Registry receives this, they will process the lease assignment and place the incoming tenant's name as the titleholder to the lease in the Land Register.

Importance of Registering a Lease Assignment

When you enter or exit a commercial lease through assignment, the process of registering the lease assignment is a crucial part of assigning a lease. This is because until this is complete, the assignee is not legally the new tenant for the commercial lease. Therefore, the lease assignment process is not fully complete. The assignor's failure to register the lease assignment with the Land Registry Office adversely impacts the assignee. Due to the lease assignment process not being legally complete, the assignee has none of the rights usually granted to them in a commercial lease. The assignee will not have the right to sole occupation of the commercial premises. The assignor will also continue to be responsible for all the lease obligations in the commercial lease agreement. Had the lease assignment been validly registered, the assignee would be responsible for the lease obligations thereafter.

It is essential to have a solicitor to see you through the lease assignment process. The outgoing tenant's solicitor will usually draft the transfer for the Land Registry Office. However, you as the assignee will want your solicitor to confirm the lease assignment is correct and complete.

Land registration is time-consuming. The assignor should register the lease assignment as soon as possible. Legal rules concerning the timeframe for registration of a lease assignment also impact the expediency of registering land. As the assignor, you can only register the lease assignment for up to two months from the lease completion date. The law will deem the lease to be void if not registered within this timeframe. You are then reliant on a discretionary agreement with the Land Registrar. The Land Registrar may extend the timeframe for you to register the lease with the use of an order.

Break Clause Within a Commercial Lease

It is important for the assignor to register the lease assignment with the Land Registry Office. The assignor's act of registering the lease assignment ensures the law considers the lease assignment process to be complete. Further, the assignor registering the lease assignment protects the incoming tenant's ability to rely on a break notice provision in the commercial lease agreement. A break clause simply allows the incoming commercial tenant to terminate the lease agreement before the lease term ends. The assignor typically needs to register the commercial lease assignment for the incoming tenant to rely on the break clause.

If the assignor has not registered the lease assignment with the Land Registry Office, the incoming tenant will be left in a precarious position. The assignee may need to end the lease early but cannot rely on the break clause.

Key Takeaways

Lease assignment is where commercial lease transfers from the existing commercial tenant to a new tenant. The assignor must register the lease assignment with the Land Registry Office in two situations. Where the commercial lease being assigned has seven years or more left on the lease term, the lease assignment will need to be registered. Likewise, registration of a lease assignment is required if the commercial lease is registered. Registration of a lease assignment is essential for assigning a commercial lease. Without it, the assignment is not legal, and it is crucial that registering the lease assignment is done within the correct time frame. Registering a lease assignment may also allow the assignee to exercise the break clause in the lease agreement if necessary.

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• Practical Law

What happens if the assignment was not registered?

Practical law resource id 8-518-4467  (approx. 3 pages).

• Should the assignment of the registered lease have been registered? Note that upon assignment, the registered lease did not have more than seven years left to run.
• Does the fact that our client is not registered as the tenant, prevent our client from exercising the break option?
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Assignment Of A Lease: Everything You Need To Know! 📃

Sep 04, 2023 | Shakeel Mir

There are are plenty of reasons why you might want to exit your commercial lease early. Perhaps your current premises are no longer suitable for the needs of your growing business, or maybe your business is in financial difficulty and you need to find a lease with more favourable terms.

There are also plenty of options when it comes to deciding how to exit a lease before the specified end date. Some of the most common include: assignment of a lease, which involves passing the lease onto another business; terminating the lease, with the help of a break clause if your contract contains one; or subletting your premises and adopting the role of landlord yourself.

Unfortunately, exiting a lease early is not always a simple process. A lease is a legal contract, and if you break it your landlord could take you to court. Opting to pursue a process such as assigning the lease to a new tenant can make exiting a lease early possible, but there are many factors that should be considered before beginning this process.

If you are thinking of trying to leave your lease early, it is advisable to obtain independent legal advice from an appropriately experienced commercial property solicitor before taking any action.

If you require legal advice or assistance on getting out of a commercial lease please call us on 0800 086 2929 , email [email protected] or complete our Free Online Enquiry Form .

In addition to office meetings, we also offer remote meetings via telephone and video conferencing software so can assist you wherever you are based.

What is assignment of a lease?

The process of assignment of a lease is essentially selling the lease to a third party (the “assignee”).

If you are a commercial property tenant, your contract likely contains a clause that allows you to assign your lease to a new tenant. To do this, you will need to find a potential new tenant yourself. Your landlord will expect this new tenant to meet the same expectations they originally set for you, and you will probably need their consent before the assignment can be completed.

While your landlord cannot reasonably withhold their consent for the assignment, they are under no obligation to give their consent if the new tenant doesn’t meet the terms set out in your contract – so it’s wise to be picky yourself about the tenant you select.

There are likely to be restrictions around when and if you can assign your lease specified in your contract. Some common restrictions include not allowing lease assignments if the contract is for a short period, and not allowing the lease to be assigned if the lease is ending within a few years.

Once a lease as been assigned, the assignee will become the new tenant and will be responsible for ensuring compliance with all of the tenant’s obligations in the lease.

What checks will a landlord make before permitting assignment of a lease?

Financial status

Your landlord will want to see evidence – usually in the form of business bank account statements – that the new tenant is in a strong financial position

Statements from previous landlords that the tenant has leased property from will be required to show that the tenant is reliable and doesn’t have a history of missing payments or otherwise neglecting their responsibilities as a tenant

Proposed use of the premises

Your landlord will probably be looking for a new tenant to intend to use the premises in broadly the same way as you have done in the past as the lease will specify what use is allowed.

Likelihood of requesting alterations to the building

As above, your landlord will require advanced notice of any alterations the new tenant may wish to make to the premises, and in some cases written permission in the form of a Licence to Alter will be required. It is likely that they may withhold their consent for assigning the lease to any tenant intending to make large-scale changes depending upon the type of premises involved.

What liabilities will you have when assigning a lease?

It is important to recognise that the assignment of a lease to a new tenant does not automatically exempt you from all liabilities related to that tenancy going forwards. In fact, once the lease assignment is complete you can still be liable should the new tenant miss any payments or otherwise break the terms of their contract.

Exactly what you will be liable for depends on when your lease began. If your lease began before January 1996 you will remain liable for all payments by any subsequent tenants – even if the lease is assigned several more times after you. This is called “privity of contract”.

For leases that began after January 1996, you will be required to sign an Authorised Guarantee Agreement . This means you guarantee payments for the next tenant, but not any further tenants.

Landlords can only claim payments of rent within six months of the money being due, and only after full notice has already been served to the former tenant.

What does lease assignment cost?

On the other hand, if the rent under the new lease is below the market rate, the new tenant may instead want to pay you a premium. If this is the case, you’ll need to make a decision on whether to charge VAT – or “opt to tax” – something that’s worth getting professional advice on.

A final charge to be considered is the cost of this advice. It is highly recommended to involve your solicitor when opting to pursue a lease assignment so as not to inadvertently break the terms of your contract and leave yourself open to court action. You should therefore also factor solicitors’ fees into your calculations when considering the cost of exiting your lease.

How to get out of a commercial lease – what are the alternatives?

Assignment of a lease is not the only way to get out of a commercial lease and depending on your circumstances and the contract you have with your current landlord, it may not always be the best option.

Some alternative ways to get out of a commercial lease early include:

Using a break clause

Some lease contracts include a “break clause” which offers both parties the opportunity to end the lease early in certain circumstances. Read your contract carefully to check if it contains a clause like this, and if it does, what terms and conditions are involved. Any time limits specified in the lease for giving of notice must be strictly followed.

Negotiating a lease exit

If your contract does not include a break clause, your landlord may still be open to you exiting the lease early. You would need to negotiate the specific terms of your exit and your landlord may require a pay-out to offset the inconvenience of having to market the property again.

Compared to lease assignment, negotiating an exit from your lease should provide a clean break with no further liabilities, but we would recommend seeking legal advice to confirm that you were exiting the contract cleanly.

Subletting the premises

A final option to consider when looking at how to get out of your commercial lease early is subletting. If your contract allows it, you can take on the role of landlord by finding and leasing your property to a new tenant.

You can use the rent payments from your new tenant to cover your own obligations, but in return you’ll be expected to take a hands-on role managing the property and dealing with the sub-tenant directly.

Need assistance with assignment of lease?

Exiting a lease early can be a complex process, whether you choose to do so by arranging the assignment of your lease or by one of the other means mentioned above.

Lease assignment is an effective way for tenants to get out of a commercial lease early. However, this can be a slow process and you will incur costs.

Contacting a solicitor at an early juncture is advisable so that you are appropriately advised at the outset of any key considerations and potential pitfalls. For example, even though you are selling the lease, you could potentially remain liable afterwards; this will depend on the age of the lease and whether you have entered into an authorised agreement or not.

Shakeel Mir is the Head of our Commercial Property department and has many years of experience in dealing with lease assignment.  He is based in our Amersham office but assists and advises clients all over the country.  In addition to office meetings, Shakeel offers remote meetings via telephone or video conferencing software so can assist you wherever you are based.

Make a Free Enquiry

If you are considering how to get out of a commercial lease or have any queries relating to any of the issues discussed in this article, please get in touch with Shakeel by calling 0800 086 2929 , emailing [email protected] or completing our Free Online Enquiry Form .

The content of this article is for general information only. The information in this article is not legal or professional advice. If you require legal or professional advice you should obtain independent expert advice from qualified commercial property solicitors such as those within our firm .

Call us 24/7 on 0800 086 2929 , email  [email protected] , or complete our Free Online Enquiry Form to arrange a free, no-obligation discussion and let us explain your legal rights and options.

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Registration in Russia: what it is and how to arrange it

Registration in Russia is one of the most important issues for foreigners coming to this country, especially for those who plan to stay in a flat or in a private home. I will try to clarify the basic moments in the article below.

What is a registration?

The registration is a procedure in which Russian authorities get information of your residence so that they can find you if needed.

Often this procedure is considered as a relic of the times of the USSR when the authorities controlled all the migration flows and could restrict people’s movement in the country.

It’s really good that since 2011 the procedure of registration has become simpler and now it’s actually easy for those foreigners who come to Russia.

However, despite the obvious simplification, some aspects stay unclear so every organization gets it in its own way.

In this article, I will try to explain what every foreigner has to know about the registration (however, the main responsibility falls on the receiving party).

When you really don’t need the registration

If you stay in Russia for less than 7 days, you don’t need to register. For example, you came to Russia on Saturday, the 1 st of August, and left the country on Monday, the 10 th of August. This means that you did not need to register because you have stayed in Russia for 6 working days (weekend days, Saturdays and Sundays, are not considered as working days).

The documents confirming your arrival and starting the counting of 7 working days are your plane/train/bus tickets.

In which cases is it necessary to register?

It is necessary to undergo the registration if you plan to stay in Russia for more than 7 days. If you crossed the border on Monday planning to stay for longer than next Tuesday, you have to register.

If you change cities, it is necessary to register in each new city (if you plan to stay there for more than 7 days). In this case, you will be “checked out” of one city and registered in another one upon arrival. If you stay in one city for 5 days and stay in another one for 5 days, it is enough to register in the first one because the overall period of your stay in Russia will amount more than 7 days. It is not necessary to register in the second city because you will stay there for less than 7 days.

In the case you come to Russia multiple times (by a double-entry or a multiple-entry visa), you need to undergo a registration every time you cross the Russian border (if you stay for more than 7 days).

Who arranges the registration?

The arrangement falls on the receiving party.

• Hotel. If you stay in a hotel that means the administration of the hotel is responsible for your registration.
• Rent apartment. The owner of the apartment carries out the registration whether it is a private person or a company.
• Private home. If you stay at your friend or relative, he/she has to register you to his/her home address.

The owner is always responsible for the registration. He/she has to be a citizen of Russia or a foreigner with a permanent residence in Russia.

The registration has to be undergone not later than in 7 days since the foreigner’s arrival.

Foreign nationals cannot register themselves because it is the responsibility of the receiving party. Actually, the foreigner does not even have to attend the registration.

Where do I have to register?

The registration can be issued:

• Directly in the regional authorities of the Directorate-General for Migration of the MFA of the RF. Earlier it was called the Federal Migration Service but this name was abolished in April of 2016.
• In any Russian post office (the cost is 216 rubles).

The procedure of the registration in Russia

If you stay in a hotel, the administration will register you freely although hostels or mini-hotels can ask you to pay a small amount of money (from 200 to 1000 rubles). It doesn’t matter if you stay in the hotel not mentioned in your invitational letter. Registration is a duty of every Russian hotel.

The registration requires the following documents:

• Foreign passport. The pages with your photo, personal data, and a visa will be copied.
• Migration card that also will be copied by the employees of your hotel.

With these documents, the administration will be able to fill in the special note of foreign national’s arrival.

The hotel’s administration is also responsible for the procedure of registration. The employees fill in the form and present it in addition to other documents to Russian migration authorities. You will be registered within 1-2 working days.

The main part of the form goes to the authorized body while you obtain the bottom part (separated by the dotted line) or the copy of this part as a confirmation of the address of your residence and the duration of your stay. The employees of the hotel also notify the authorized body of your departure.

In the case you stay in a private apartment (for example, by using the Airbnb service), your registration falls on the owner of the flat/house. You will probably have to pay for it (from 500 to 2000 rubles); sometimes the owner can even refuse to do it (although he is legally obligated to register you).

Before payment, ask your owners if they are going to register you and how much will it cost. If they refuse to register you or want too much money, seek for another apartment with registration for a reasonable price.

In the case, you have already paid for the apartment but the owner doesn’t want to register you, contact the company that has issued your invitation and ask if they can register you in the city of your stay. The organization will take a payment for the registration (in their own address or another one).

If the company that has issued your invitation do not provide registration services, you will have to seek for the organization offering this service. It has to have representation in the city where you will stay because you will have to apply to this company in person and bring the passport and the migration card.

If you stay at your relatives/friends, they can register you in any post office. In addition, you can use services of some of the organizations in the city providing such services.

Some details for a conclusion

• The registration is similar whether you come to Russia by a tourist or by a business visa. The only difference is that in the case you obtain a business visa, you can register for a period up to 3 months.
• If you travel through the Trans-Siberian route by train and stays in it for a night, your travel ticket is considered as a registration document and you should always keep it around.
• The Russian police is not authorized to ask for your registration in the street. The responsibility for all the violations falls on the receiving party. In the case, you have been asked for registration right on the street (which happens rarely), contact the consulate immediately.
• In order to leave the country, you don’t have to present the government registration but you do have to present a migration card.

I hope this article has been useful and helped you to understand how the procedure of the registration goes. You can share your experience below.

Deed of Assignment - Commercial Lease

If the commercial lease was for a term of up to 7 years (i.e. a period not exceeding 7 years) select the option "Unregistered Lease (i.e. a lease for a commercial property that does not exceed 7 years)". If the commercial lease was for a term of more than 7 years (i.e. a period exceeding 7 years) select the option "Registered Lease (i.e. a lease for a commercial property that is for more than 7 years)".

Need personalised assistance? At the end, you can choose to consult a lawyer.

DEED OF ASSIGNMENT OF COMMERCIAL LEASE

This deed is dated ________

________ , a company incorporated and registered in England and Wales with Company Number ________ whose registered office address is at ( the Assignor ):

________ , a company incorporated and registered in England and Wales with Company Number ________ whose registered office address is at ( the Assignee ):

I. The remainder of the term under the Lease is vested in the Assignor.

II. The Assignor has agreed to assign the Lease to the Assignee on the terms contained in this deed.

III. The Landlord's consent is not a requirement for assignment under the Lease.

AGREED TERMS

1. Interpretation

Contract: a contract for the assignment of the Lease dated ________ , made between ________ and ________ .

Lease: a lease dated ________ , between ________ (the Landlord ) and ________ (the Tenant ) and ________ (the Guarantor ) relating to the property:

Lease Obligations: the tenant covenant and all the terms and conditions contained or referred to in the Lease.

Premium: the sum of £ ________ (________) (exclusive of VAT).

Property: the property located at the address:

Rent: the rent reserved by the Lease.

VAT: value added tax chargeable in the UK.

(a). The headings of Clauses in this deed shall not affect the interpretation of this deed.

(b). A reference to the Lease includes any deed, licence, consent, approval or any other instrument that is supplemental to it.

(c). A reference to the Property includes the whole and any part of it.

(d). Tenant covenant has the same definition under the Landlord and Tenant (Covenants) Act 1995.

(e). A person also refers to a natural person, corporate or unincorporated body (regardless of its separate legal personality).

(f). Unless required otherwise in the context used, words in the singular shall include the plural and words in the plural shall include the singular.

(g). A reference to legislation or a legislative provision is a reference to the amended version, extended version or re-enacted version from time to time.

(h). Any obligation requiring a party to not do something also includes an obligation to not allow such a thing to be done.

2. ASSIGNMENT

(a). On account of the Assignee's payment of the Premium to the Assignor (of which the Assignor acknowledges receipt), the Assignor assigns the Property to the Assignee for the remainder of the unexpired term of the Lease, subject to the payment of the Rent and adhering to the Lease Obligations.

(b). The Assignee shall pay the Premium via bank transfer to the following bank account:

(c). The Assignee shall pay the Premium to the Assignee using the agreed payment method on ________ .

(d). The Property shall be assigned without any adverse right or claim affecting its use or transfer, except the following:

(I). any matters, except financial charges, that are contained or referred to in the entries or records made in any registers maintained by the Land Charges Department of HM Land Registry as at ________ ;

(II). all matters that are contained or referenced in the Lease;

(III). any matters that can be discovered by inspecting the Property before the date of this deed.

(IV). any matters which the Assignor is not, nor could it be aware of;

(V). any matters which have been disclosed or which would have been disclosed by the searches and enquiries which a prudent Assignee would have made before entering this deed;

(VI). any notice, order or proposal given or made (before or after the date of this deed) by a body acting on statutory authority;

(VII). any matters which are, or (in the case of a Lease that will be unregistered) would be, unregistered interests which override first registration under Schedule 1 of the Land Registration Act 2002; and

(VIII). any matters disclosed in the Title Documents.

3. GUARANTEE OF TITLE

(a). The Property comes assigned with full title guarantee.

(b). The implied covenant set out in section 4(1)(b) of the LPMPA 1994 shall not extend to any breach of the Lease relating to the physical state or condition of the Property.

(c). For the purposes of section 6(2) of the LPMPA 1994, and notwithstanding section 6(3) of the LPMPA 1994, all matters which have been recorded in publicly accessible registers, at the date of this deed, shall be deemed to be within the Assignee's actual knowledge.

4. INDEMNITY

(a). The assignee covenants that, from the date of this deed until the earlier of the term of the lease or until the Assignee is released from the tenant covenant imposed by the Landlord and Tenant (Covenants) Act 1995, it will pay the Rent and any VAT payable on it and observe and perform the Lease Obligations and indemnify the Assignor against all proceedings, costs, claims and expenses arising because of any failure to do so.

(b). By an indemnity only, the Assignee covenants with the Assignor that it will observe and perform the changes, encumbrances, covenants and restrictions contained or referred to in the Title Documents for as long as they are subsisting and capable of taking effect. The Assignee shall also keep the Assignor indemnified against all proceedings, costs, claims and expenses arising from any failure to do so.

(a). Upon the completion of this deed, the Assignee shall make sure to pay £ ________ towards:

(I). the Assignor's legal costs; and

(II). any disbursements incurred in connection with the assignment of the lease.

(a). Every amount identified as payable by a party to the other party under this deed shall be exclusive of any applicable VAT.

(b). Where there is VAT chargeable on any supply made under this deed, the party receiving the supply shall, subject to receipt of a valid VAT invoice, pay the party the supplier an amount equal to that VAT as additional consideration on the date that the supply is made.

7. 585585 828552585

(a). 5588 5225 82282825228 252 222852 525222222 8228222 252 2552828 525 25228 2528252282 2825 588 25288258 58885888228, 82552822252282, 222228528228, 555522222228, 52525825258228 525 5252222228 8228222 2522 52852822 22 828 8582282 252225.

(b). 552 88882222 525282 582228825228 2552 82 22225822 2588 5225, 82 5228 222 5282 22 522 52252822252822 25 85555222 (82228222 25 222882222) 58852 2522 25282 85885 552:

(I). 822258225 82 2588 5225; 25

(II). 52258825 82 522 8582222 82552822252282 25 528222828 2552 252 88882225'8 8228225282 558 25288525 22 522 8582222 228585828 558825 82 252 88882222'8 8228225282 822252 252 5522 22 2588 5225.

(c). 552 885888822 225 25555 85588 222 82 25885525 82 52225822 822258225 82 2588 885582.

8. RIGHTS OF THIRD PARTIES

This deed does not give rise to any rights under the Contracts (Rights of Third Parties) Act 1999 to enforce any term of this deed.

9. GOVERNING LAW

This deed and any dispute or claim (including non-contractual disputes or claims) arising out of or in connection with it or its subject matter or formation shall be governed by and construed in accordance with the law of England and Wales.

10. JURISDICTION

Each party irrevocably agrees that the courts of England and Wales shall have exclusive jurisdiction to settle any dispute or claim (including non-contractual disputes or claims) arising out of or in connection with this deed or its matter or formation.

Executed as a deed by the Assignor acting by:

________ , ________

_______________________

( the Assignor )

Executed as a deed by the Assignee acting by:

______________________

( the Assignee )

HOW TO CUSTOMISE THE TEMPLATE

Answer the question, then click on "Next".

The document is written according to your responses - clauses are added or removed, paragraphs are customised, words are changed, etc.

At the end, you will immediately receive the document in Word and PDF formats. You can then open the Word document to modify it and reuse it however you wish.

You will also have the option of requesting assistance from a lawyer.

Moscow City Election – 2023

• Introduction to the Candidates
• GUIDE: How to Register to Vote and Vote

This year in the City of Moscow, three City Council seats and school board seats for Zones 1, 3, and 4, are up for election. For the city council race, the winners will be whichever candidates receive the top three sets of votes , while the school board trustees will be decided based on who gets the most votes in their respective districts.

School board

School Board Zone 1: Cody Barr (REP), Jim Frenzel (DEM) School Board Zone 3: Gay Lynn Clyde (REP), Dulce Kersting-Lark (DEM) School Board Zone 4: Jim Gray (REP), Dawna Fazio (DEM)

City Council Candidates:

Get to know the candidates through our Candidate Candids interview series ! These long-form conversations cover more than mere talking points.

Nathan Tupper

Evan Holmes:

Bryce Blankenship

Joe Campbell

Sandra Kelly

While Sandra was unable to conduct an interview with us, you can find more information about her platform and campaign here: https://www.facebook.com/kellyformoscow

Voter Registration Info

Early voting starts Oct 25th, and runs through November 3rd. During this period, citizens can go to the Latah County Courthouse between 8 a.m. and 5 p.m. and vote. Otherwise, election day is on November 7th, at which time citizens will need to go to their respective precincts to vote ( Precinct Map ), based on their residential address.

If your permanent residence is here in Moscow, Latah County, Idaho:

****************************************************************************************************

To register to vote online (voteidaho.gov) or at the Latah County clerk’s office or at the polls, you must be a citizen of the United States, 18 years of age, a resident of Idaho and your county for 30 days prior to the election. To prove this, you must provide:

• Idaho-issued identification card or Idaho driver’s license or current US passport
• One approved proof of residence document

Any of the above photo identification with correct residence address:

• Lease or rental agreement
• Utility bill (excluding cellular telephone bill)
• Bank or credit card statement
• Paystub, paycheck, government-issued check
• For students: Enrollment papers from current school year. 

Identification

Do you have an Idaho state-issued photo identification card (or driver’s license)?

Yes, I have an Idaho state-issued photo identification card (or driver’s license). 

Is your address current on it?

If not please update your address online at dmvonline.itd.idaho.gov/   Or in person at Latah County DMV, 1313 S. Blaine Street, Moscow, ID 83843. (No need to pay the $20 new-card fee. The address will be corrected in the state’s system.) 

No, I do not have an Idaho state-issued photo identification card (or driver’s license) . 

Follow the Idaho DMV rules for a driver’s license. Or apply for an Idaho photo identification card:

Bring 1 or 2 (2 will allow you to get a Star Card for travel purposes) of these original documents proving residency that are less than a year old in your current name with current address to the DMV:

• Lease, rental agreement, mortgage, or deed
• Account statement from one or two different utilities (no ¾ page or cell phone bills)
• Account statement from a bank or financial institution
• Medical or insurance provider statement, invoice, or explanation of benefits
• Pay stub or employment verification (it must list your legal name.)
• Idaho school enrollment records with current address (college IDs are not accepted)
• Residency affidavit signed by an adult over age 18
• Vehicle, homeowner’s, or renter’s liability information.
• And bring your birth certificate and social security card .

Have you been recently married and need to update your name on your Idaho state-issued photo identification card (or driver’s license)?

First, change your name on your social security card by taking to Lewiston Social Security Office:

• Maiden name social security card
• Marriage certificate (not the gold-seal version, but the certified copy)
• Must have State File Number, Groom, Bride, and Family ( maiden ) Name completed
• Birth certificate (recorded copy, not the keepsake copy)
• Maiden name state-issued photo identification card (or driver’s license).

Then, change your name on your Idaho state-issued photo identification card (or driver’s license) at the Latah County DMV, 1313 S. Blaine Street, Moscow, ID 83843.

I was recently married, but I do not have ANY valid photo identification card

• Follow the Idaho DMV rules for a driver’s license. 

Or apply for an Idaho state-issued photo identification card (see steps above). Wait for the plastic one to arrive in the mail. 

2. Change your name on your social security card by taking to Lewiston:

• New Idaho state-issued photo identification card (or driver’s license).

3.  Wait 24-48 hours. Then return to DMV in person for your state-issued photo identification card (or driver’s license).

There is a new, free Idaho voting identification card option for people who do not drive. This program began in July 2023, so there is not much information available on it. 

The signed affidavit is only to be used if the properly registered voter comes to the polls without a picture identification, and his verbally given address matches the roster. If the addresses do not match, the person must re-register to vote (must go and get the photo identification and proof of address).

As a student , where should I register to vote?

From the Idaho Secretary of State’s website :

“College students must establish, as with all other voter registration applicants, that the locale within which they seek to register and vote is their domicile i.e. that they are living in the college community with the intention of abandoning their former domicile and with the intention of remaining permanently, or for an indefinite length of time, in the new location. Some of the factors which may be relevant in determining whether domicile has been established for voting purposes by a student as well as any other applicant, are as follows:

• Has the applicant registered to vote elsewhere?
• Where does the applicant maintain his checking and saving accounts, if any?
• Where does the applicant pay taxes, and what address did he list as his residence on his last income tax return?
• What is the residence listed on the applicant’s driver’s license?
• If the applicant owns an automobile, where is it registered?
• Does the applicant live year round at his claimed domicile, or does he divide it elsewhere? If it is divided, how much time is spent elsewhere and for what reason?

As a student, you should not be registering and voting in your college locale simply because you failed to register and vote at your true domicile. Registering to vote is a serious matter which should only be done after proper reflection. It should be noted that there is no federal right to vote anywhere in the United States for the office of President. State laws control registration and voting and State residency requirements must be met.”

“We need and want all students to vote at their legal domicile.”

If your permanent residence is in another state, contact your home state’s election division to register and vote (absentee?) there.

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confirmatory deed of assignment trademark

Understanding a deed of assignment for intellectual property

A deed of transfer is used to change the ownership of intellectual property, a common occurrence in business. Explore how and when to use one.

Find out more about intellectual property basics

by   Brette Sember, J.D.

Brette Sember, J.D., practiced law in New York, including divorce, mediation, family law, adoption, probate and estat...

Read more...

Updated on: January 22, 2024 · 3min read

Understanding intellectual property in business

How to transfer intellectual property rights in business, what to include in a deed of assignment, registering new ownership, restrictions on intellectual property transfers.

Most companies have intellectual property as part of their assets, including software, product design, or copyright to white papers. Buying or selling such property is done using a document called a deed of assignment.

A large part of what a business consists of may be tied to intellectual property . It's easy to see physical property a company owns, such as a building, office furniture, or inventory, but intellectual property can be more challenging to identify.

Most businesses have intellectual property, or works created by human minds or, in some cases, by computers. Some examples of intellectual property include architectural drawings, ad campaigns, company or product names, inventions, and source code.

Examples of when transfers of intellectual property might happen include when a company is buying another company, when you are setting up an LLC and want to transfer your intellectual property into the company, or when a business buys product rights from another company or individual.

A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid.

A deed of assignment must be in writing and should include:

• The names and addresses of the assignor and assignee
• A description of the program or product for which the rights are being transferred
• A statement that all intellectual property rights to the property are being transferred
• Signatures of the parties and the date of the agreement execution

The deed could also include the following sections, where applicable:

• Consideration, or payment, to be made to the original owner.
• Warranties, or promises that the intellectual property rights being assigned don't infringe on anyone else's intellectual property rights . For example, in a deed regarding the transfer of a copyright, this section could state that the copyrighted work is original and not owned by someone else.
• Indemnification, or promise by the seller to reimburse the assignee if there is some problem with title to the property.
• Future assignments. For example, the agreement could be ongoing, so that anything the assignor creates in the future for this product or program is also transferred to the buyer.

Although a deed of assignment transfers ownership in intellectual property , it does not change the registration of the ownership. The assignee is responsible for handling all registration requirements.

For example, if a patent is transferred via a deed of assignment, the new owner must record the change in ownership with the U.S. Patent and Trademark Office. Similarly, the transfer of a copyright is recorded with the U.S. Copyright Office.

Transfers of intellectual property must comply with U.S. laws. One obvious caveat is that you can't transfer property you don't own. Transfers must also comply with antitrust laws, which are set up to prevent one company from completely dominating an industry.

If intellectual property rights are being transferred overseas, the transfer must comply with Export Administration Regulations and the International Traffic in Arms Regulations , which are designed to protect national security and trade.

The deed of assignment can be a crucial part of a business deal or transaction. You can create a deed of assignment yourself, or you can work with an attorney .

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Deed of Assignment (for Intellectual Property)

In the realm of intellectual property, a Deed of Assignment is a formal legal document used to transfer all rights, title, and interest in intellectual property from the assignor (original owner) to the assignee (new owner). This is crucial for the correct transfer of patents, copyrights, trademarks, and other IP rights. The deed typically requires specific legal formalities, sometimes notarization, to ensure it is legally enforceable.

To be legally effective a deed of assignment must contain:

• Title of the Document : It should clearly be labeled as a "Deed of Assignment" to identify the nature of the document.
• Date : The date on which the deed is executed should be clearly mentioned.
• Parties Involved : Full names and addresses of both the assignor (the party transferring the rights) and the assignee (the party receiving the rights). This identifies the parties to the agreement.
• Recitals : This section provides the background of the transaction. It typically includes details about the ownership of the assignor and the intention behind the assignment.
• Definition and Interpretation : Any terms used within the deed that have specific meanings should be clearly defined in this section.
• Description of the Property or Rights : A detailed description of the property or rights being assigned. For intellectual property, this would include details like patent numbers, trademark registrations , or descriptions of the copyrighted material.
• Terms of Assignment : This should include the extent of the rights being transferred, any conditions or limitations on the assignment, and any obligations the assignor or assignee must fulfill as part of the agreement.
• Warranties and Representations : The assignor typically makes certain warranties regarding their ownership of the property and the absence of encumbrances or third-party claims against it.
• Governing Law : The deed should specify which jurisdiction's laws govern the interpretation and enforcement of the agreement.
• Execution and Witnesses : The deed must be signed by both parties, and depending on jurisdictional requirements, it may also need to be witnessed and possibly notarized.
• Schedules or Annexures : If there are detailed lists or descriptions (like a list of patent numbers or property descriptions), these are often attached as schedules to the main body of the deed.

Letter of Assignment (for Trademarks and Patents)

This is a less formal document compared to the Deed of Assignment and is often used to record the assignment of rights or licensing of intellectual property on a temporary or limited basis. While it can outline the terms of the assignment, it may not be sufficient for the full transfer of legal title of IP rights. It's more commonly used in situations like assigning the rights to use a copyrighted work or a trademark license.

For example, company X allows company Y to use their trademark for specific products in a specific country for a specific period.  

At the same time, company X can use a Letter of Assignment to transfer a trademark to someone. In this case, it will be similar to the Deed of Assignment. 

Intellectual Property Sales Agreement

An IP Sales Agreement is a detailed contract that stipulates the terms and conditions of the sale of intellectual property. It covers aspects such as the specific rights being sold, payment terms, warranties regarding the ownership and validity of the IP, and any limitations or conditions on the use of the IP. This document is essential in transactions involving the sale of IP assets.

However, clients usually prefer to keep this document confidential and prepare special deeds of assignment or letter of assignment for different countries.

IP Transfer Declaration

In the context of intellectual property, a Declaration is often used to assert ownership or the originality of an IP asset. For example, inventors may use declarations in patent applications to declare their invention is original, or authors may use it to assert copyright ownership. It's a formal statement, sometimes required by IP offices or courts.

When assigning a trademark, the Declaration can be a valid document to function as a proof of the transfer. For example, a director of company X declares that the company had sold its Intellectual Property to company Y. 

Merger Document

When companies or entities with significant IP assets merge, an IP Merger Document is used. This document outlines how the intellectual property owned by the merging entities will be combined or managed. It includes details about the transfer, integration, or handling of patents, copyrights, trademarks, and any other intellectual property affected by the merger.

In all these cases, the precise drafting of documents is critical to ensure that IP rights are adequately protected and transferred. Legal advice is often necessary to navigate the complexities of intellectual property laws.

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• Ten Questions about Confirmatory Assignments

1. Depending upon the applicable IP rights and related law of contract of the jurisdiction, to what extent can an unwritten agreement validly assign IP rights? 2. Assuming that an unwritten assigment is valid, what is the evidentiary showing that is required? 3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? 4. Is the evidentiary showing different in connection with establishing the validity of the assignment in the context of a transaction? 5. How can a purchaser receive sufficient comfort about the validity of the assignment, or is it a matter of risk allocation depending upon the positon of the parties? 6. Does the standard of evidence to establish an unwritten assignment differ once again in the context of a court proceeding? 7. Does the standard of evidence to establish an unwritten assignment differ yet again iin the context of taxation? 8. Is a confirmatory assignment a form of ratification? 9. If it not a form of ratification, what is the proper legal characterization for the agreement? 10. In light of all of the foregoing, does the confirmatory assignment confer any benefit to the parties, other evidentiary or substantive?

13 comments:

Confirmatory assignments are frequently used where a written assignment already exists, but the parties do not want to disclose that document because it contains sensitive information (e.g. payments, etc.). In addition, they are often used to confirm an 'automatic' assignment (e.g. from an employee to his/her employer). The latter may be useful, for example, when submitting a US application with UK inventors.

In the United States, this is a statutory question: "Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing." 35 USC Section 261. Your questions are far more interesting as applied to licenses or servitudes more generally. Based on hundreds of years of common law, one would imagine that all personal property, including patents, would require encumbrances to be publicly recorded for them to be enforceable on subsequent purchasers for value without actual notice. In fact, equitable servitudes on personal property were not enforceable at all at common law. As far as I can tell, patents present a unique exception to this history. For that reason I have wondered whether it is fair even to call patents property -- despite their being deemed so by statute. On my view, this is the most underappreciated obstacle to the emergence of a healthy market for patents. Lemley and Myhrvold suggested years ago a solution to the problem -- namely, of requiring the public disclosure of all assignments and licenses. That seems to have gone nowhere thanks to an incomplete understanding by current stakeholders of how such a transition would result in an entirely new market equilibrium, or at least to the general desire for incremental rather than radical changes to the status quo.

Confirmatory assignments are commonly used to record assignments in writing where the commercial terms of an assignment are to remain confidential. I cannot think of many instances where I would be happy to rely on a written confirmation of an unwritten assignment. It is my understanding that in most common law countries an assignment must be in writing for it to be legally effective, otherwise at best your unwritten assignment may only transfer an equitable interest in the relevant IP. A type of assignment document I have occasionally seen and used is the assignment that is both operative and confirmatory. In other words, "I confirm that I assigned, but if that assignment wasn't legally effective for any reason then I hereby assign". It isn't ideal, but sometimes it's the only way to fix a break in the chain of title when you really don’t think you can rely on that unwritten assignment.

3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? Yes, that is possible in certain jurisdictions. At the most you would need a date of assignment and particulars of the assignee and the assignor. The relevant forms necessary to record the assignment are prepared by the agents and signed on behalf of the assignee. Example, Singapore

Rob hit the nail on the head. They are used to simplify matters in circumstances where the parties may have been better to have signed short-form agreemnts. A party will often not want to disclose a document with all of the juicy commercial terms, so a confirmatory assignment may be used. A final (arguably erroneous) use may be where a party has, to settle a matter, assigned a CTM under cover of a letter or unilateral agreement signed only by the owner. In the case of a CTM, the assignment has to be signed by both parties to be valid. Therefore, whilst the mark may be assigned in the head of the previous owner, something more needs to be done to validly assign. Arguably the follow-up is not confirmatory in those circumstances, but I've seen the document that followed described as confirmatory.

Associated with the issue of confirmatory assignments is the issue of assignment documents with a purported "effective date" earlier than the date of execution of the document. In jurisdictions where rights in an application can only be assigned in writing, the writing requirement was then not fulfilled as at the "effective date". This may be particularly important in relation to priority claims.

I have seen such Confirmatory Assignments used as evidence supporting a transfer request before the EPO, but it wasn't my job to question them even though the whole procedure looked quite fishy to me. Once upon a time there was a nice little company A which got gobbled by company B. One year later, company B was in turn purchased lock, stock and barrel by company C. A, B and C were in three different countries. A's European representative kept prosecuting the EP cases, but only bothered to file a transfer request when a given application was just about to mature into a grant, providing in most cases a confirmatory assignment drafted by an US notary public as evidence. The document stated that A's IP was transferred to three entities Ca, Cb and Cc, which are all presumably 100% subsidiaries of C. I infer that the applications are jointly owned by all three companies. The assignment is signed by Ca, Cb and Cc's officers as well as the notary. The document couldn't have been signed by A's officers, since A did not exist anymore at that point. There is no mention whatsoever of company B either , so the document did not describe what actually happened, since A could never have dealt directly with C. The representative's cover letter only requests transfer to company Ca, leaving Cb and Cc out of the picture, and Ca is the only name entered in the EPO's register. I googled up a bit and I found out that B wrote in its ultimate annual that it now owned all of B's IP, and C later stated in its own annual report that B's IP was now located in yet another subsidiary Cd, different from Ca, Cb or Cc. In one case the Umschreibestelle questioned the confirmatory assignment in that in only bore the signature of one of the parties. The representative adamantly replied that the assignment should be taken at face value and that's it. The EPO did not insist, and took down the transfer - in Ca's name only. In one of the applications this examiner was bone-headed enough to be minded to consider a refusal, prompting the representative to file a "divisional" application in order to keep the show going. The weird thing was that the "divisional" was in A's name, even though it no longer existed for years. The new application was eventually abandoned, so all the interesting questions which arose did not need to be answered. From the preceding, I think I'd start kicking and yelling about who actually owns a patent (and thus entitled to initiate action) if I were ever dragged before court in an infringement action where a confirmatory assignment was involved. The standard for proving a transfer of rights appears to be much lower as to the right to transfer of an opposition. A confirmatory assignment may appear a practical shortcut, but it could be a false saving. As to the argument that a confirmatory assignment can keep details secret, I don't think they're worth the risk either. I've seen IP sale contracts accepted as evidence for a transfer before the EPO where more black ink was poured to obscure passages than the CIA ever used when declassifying a document. BTW, one of these contracts involved yet another of C's subsidiries transferring its IP to numbered entities conveniently located in tax flexible territories.

Thanks for all of your great comments. In one off-site communication on the topic yesterday, I suggested that confirmatory assignments are among the "dirty little secrets" of IP practice. She wrote back that in fact they are the "dity little not-so-secrets" of IP. I suspect that we are both right.

Something that does not appear to be widely appreciated is that the box for the date of agreement on EPO Form 1002 is provided for the convenience of the applicant only, there being no requirement in the EPC to provide a date. I have often filed forms with no date where the information was not available, and no objection has ever been raised. I have only seen this explicitly stated in the answer to question 80 in Dr. Günter Gall's classic book for EQE candidates "European & International patent applications: questions and answers" [ISBN 0-85121-555-6; 1989 edition]. Dr Günter Gall was a Director of the EPO and evidently wrote with authority. I have had more knowledgeable inventors query the appropriateness of signing any sort of assignment of rights that he doesn't own because the invention belongs to the employer by virtue of UK law, and have then had to explain the USA [for example] doesn't recognise this aspect of UK law. Such assignments made in respect of a first filing are certainly useful when subsequently filing in the USA if the inventor is no longer contactable or become uncooperative, eg due to imminent redundancy.

Anonymous' knowledgeable inventors have a point, and this has always been my rationale for obtaining confirmatory assignments. It must surely be a fundamental principle that one cannot assign what one does not own, so a written assignment from an employee to an employer that already owns the invention by terms of a contract of employment must surely be void. The problem is not solved by writing the employment contract in such a way as to place the employee under an obligation to assign, because a subsequent assignment to another party, while being a breach of contract, will not necessarily enable the invention to be reclaimed by the employer (see, eg Stanford v Roche 583 F.3d 832 (Fed. Cir. 2009). As I understand it, the US law relating to employee inventions is basically the common law. The issue is not that the USPTO will not recognise that the employer owns the invention, rather it is the specific requirement that the inventor assign the rights reflected in the particular patent application, ie that a suitable assignment cannot be completed until the inventor has the actual filed specification and claims before her. A general assignment of the invention, and all notional future rights, will not suffice for this purpose. However, an assignment of a PCT application designating the US is fine (although it may take a little effort to persuade the USPTO to accept a document that is not in its standard form). An unavailable or uncooperative inventor remains problematic even if you have a suitable assignment document, because the USPTO cannot accept the filed application until it has an inventor's declaration, or a petition has been granted to allow the application to be accepted without the signed declaration. Though not a US attorney, for my sins I have found myself with clients in this situation, and it can be a lot of work to resolve.

"This and the related topic of failure to agree or document assignment of IPRs arise all too frequently. I have been faced with the challenge of "I paid, so I own" throughout my career. Here are 10 thoughts on this topic: 1. No one should believe that the law will come to their rescue if they do not document a written assignment and have it signed by the assignor and the assignee. 2. Assignments of IPRs are a perfect example of lack of global harmonisation. There is huge discrepancy between national laws as to what formalities are required - few require more than a written assignment signed by both parties. 3. The greatest density of disputes is between consultants and the corporations who hire them. The expectation is that IPRs in the "work product" automatically transfer. Big mistake. 4. English law enjoys equity, and can be persuaded to find an intention to assign (aka an equitable assignment). Hoping for this result is a lottery. In other parts of Europe, the odds are worse. 5. The position is not as random within an employee/employer relationship, because generally the first owner is the employer. However, at the edges ("course of employment") it is well worth documenting the position. In this context, do not assume that ownership is the end of the matter. Always think about attribution issues (such as moral rights) and economic reward (for exceptional contribution). 6. Failure to document the IPR position is statistically likely to create a significant commercial issue downstream. I have personally seen IPOs delayed, joint ventures stall and tens of disputes that frustrate and delay commercial exploitation. 7. The consolation prize in an ownership dispute is typically a licence. Within this one word, is a world of pain as the parties debate scope (field of use), term (for a project to perpetual), ambit (exclusive to non-exclusive), not to mention royalty. So whilst ownership is undoubtedly first place, bottom of the class will not get much at all. 8. Banks and investors still struggle to understand and value IPRs in the same way as tangible assets such as property and stock, so they scare easily. If chain of title and ownership is not clear, expect them to have significant concerns in all other areas such as validity and infringement. 9. Joint ownership looks like a good compromise. Normally it isn't. There is no global uniformity on the rights conferred on joint owners - and even within a jurisdiction it's different between the various IPRs. 10. Which means that I'm normally just so relieved to receive a confirmatory assignment, that I seldom have the energy to think about Neil's 10 questions - but now I will!"

Many interesting comments on assignments. Here is a further related issue, perhaps basic compared to a confirmatory assignment under the original fact pattern. Assume the inventor has executed an assignment to her employer for a US provisional patent application that includes assignment of all later applications, using standard language regarding assigning international applications, US, non-US applications. The assignment properly assigns the right to claim priority. Then a PCT application is timely filed that claims priority to this provisional. The PCT application includes new disclosure in the specification, including new examples, and new claims. Is a second assignment needed or does the assignment of the provisional suffice? For all jurisdictions? If a new assignment is needed, how is it worded to avoid the issue of 're-assigning' what has already been assigned in the provisional assignment? Seems one can only assign rights one has not already assigned away.

In answer to the last comment, yes, a new assignment is needed. An assignment has to relate to an invention, and if that invention is new, it cannot have been previously assigned. Equitably, yes, but then we argue over whether the new invention is actually covered.

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Closing and Post-Closing Issues

By Lanning G. Bryer

I. MEANS OF ACQUIRING INTANGIBLE ASSETS II. CONDITIONS TO CLOSING III. CLOSING DOCUMENTS IV. CLOSING DAY V. POST-CLOSING ISSUES VI. CONCLUSION

The deal is virtually done. All that remains is for the parties to “close” the deal. A common definition of a “Closing” date is that date upon which all conditions precedent set forth in an agreement must be satisfied. What seems like a relatively simple and quick process can be anything from short and sweet to long and painful. The three most important skills for the attorney attending a Closing to exercise in order to achieve a successful Closing are anticipation, preparation and organization. If all necessary documents have been prepared and issues anticipated and addressed, the Closing can be seamless. Furthermore, good organization on a complex transaction can make what would be a long, drawn out-process much smoother and more efficient. The following paper identifies and then discusses many of the most common issues to arise during the Closing and post-Closing of a business transaction involving trademark rights.

[1] Lanning G. Bryer, a partner in the New York office of the law firm Ladas & Parry, has written extensively on intellectual property issues. The author acknowledges the assistance of Scott J. Lebson, Esq., an associate in Ladas & Parry’s New York office, in the writing of this paper, which was first presented by Mr. Bryer at the INTA’s Trademarks in Business Transactions Forum in New York City, February 25-26, 2002. Mr. Bryer can be reached via e-mail at  [email protected] . Copyright © 2002 by Lanning G. Bryer. All Rights Reserved

I. MEANS OF ACQUIRING INTANGIBLE ASSETS

In many instances, it is critical to understand the transfer of intellectual property as an essential aspect of a larger transaction, not simply the transfer of intellectual property rights by itself. On the other hand, intellectual property is very often the predominant factor driving mergers and acquisitions. The transaction should be construed in the context of a sale of an entire business in which those intangible assets are used. Generally, businesses are sold either by the purchase of the stock in a corporation or though a purchase of assets used by the business to be sold. Under either scenario, two basic sets of documents, an “acquisition agreement” and “transfer documents” will be prepared and negotiated.

  II. CONDITIONS TO CLOSING

Buyer and Seller typically specify conditions that must be present or events that must occur before they are obligated to consummate the deal. A Seller typically makes representations and warranties about the business as of the date that the acquisition agreement is executed, but that date may be weeks or months prior to Closing, especially if antirust or other regulatory approvals are required in order to close the transaction. The Buyer will typically require that at Closing, the Seller warrant that the representations are still true. If certain statements are no longer true, the Buyer might have the option of declining to go through with the transaction as specified. Other conditions of Closing may reflect issues that come to light during the negotiation of the agreement. For example, in a stock sale, if the Buyer learns certain trademark rights are not owned by the corporation whose stock is being acquired, it may require that those assets either be transferred to the corporation before Closing or directly to the Buyer at Closing. If the Seller does not comply, the Buyer will not be obligated to buy the stock of the corporation.

III. CLOSING DOCUMENTS

A. purchase agreement:, 1. further assurances, b. general trademark assignment agreement.

1. Assignment – Goodwill – United States of America 2. Assignment – Goodwill – Worldwide 3. United States Issues – Intent-to-Use Applications – Verified Statement of Use 4. Intent-to-Use Applications – Amendment to Allege Use 5. Intent-to-Use Applications – Agreement to Continue Prosecution until Verified Statement of Use filed

C. CONFIRMATORY ASSIGNMENT DOCUMENTS FOR RECORDAL IN THE RELEVANT JURISDICTIONS WHERE TRADEMARK RIGHTS EXIST

1. Worldwide Recordal of Intellectual Property Rights 2. Separate Documents for Each Jurisdiction are Required. 3. Costs

D. COMMERCIAL LOAN DOCUMENTS E. TRADEMARK SECURITY AGREEMENT F. RELEASE AGREEMENTS G. OPINION LETTERS H. LICENSE AGREEMENTS I. ANCILLARY AGREEMENTS AND OBLIGATIONS 

In most instances, the Purchase Agreement does not actually effectuate a transfer of assets from Seller to Buyer. Instead, it merely embodies the Seller’s promise to sell stock or assets to the Buyer under certain terms. The consummation of the transaction takes place at the Closing or at a later date (post-Closing) when the parties execute transfer documents and any other ancillary agreements. This is especially true in terms of trademark rights due to their territorial nature. This may dictate a number of specific procedures which are governed by the law of each individual jurisdiction in which the trademark rights exist.

Trademark rights require specific confirmatory assignment and other

documentation to be prepared in accordance with local trademark practice for filing at the relevant Trademarks Office. Additionally, the documents required to be submitted in many jurisdictions frequently change or new requirements are added. Therefore, it may be necessary for the Seller to execute additional documentation subsequent to Closing.

In many instances, the Buyer may not be notified that it is required to submit additional documentation from the Seller until weeks or months after the Closing. Trademark rights in certain jurisdictions may not be capable of being transferred due to current political difficulties (e.g., Iraq, Libya or Afghanistan). Therefore, the Buyer may wish to make certain that the Seller (or its successors or assigns), is required to cooperate and execute such documentation.

“Further Assurances” clauses are critical in order to make certain that when this contingency arises, the Buyer can be in a position to seek Seller’s cooperation. Cooperation from the Seller is especially critical in transactions involving large trademark portfolios where the Buyer may require the Seller’s cooperation in execution of additional documents post-Closing on several occasions. The Buyer may need to ensure that it maintains an officer capable of executing documents post-Closing, especially where the corporate entity acquiring the rights changes its corporate structure by merger or acquisition.

The General Trademark Assignment Agreement is the master assignment

agreement which conveys “equitable title” to all trademark rights which are identified in a schedule, usually attached as an exhibit. In many instances, this schedule can be quite extensive as it should identify all trademarks, including common law rights, pending applications and granted registrations being transferred for each jurisdiction. This document is executed at the Closing and should bear an effective date as of the Closing date, unless the specific circumstances of the transaction dictates otherwise. The General Trademark Assignment Agreement serves several purposes:

(1) to clearly set forth and identify all trademark rights being assigned; (2) to demonstrate to tax authorities that equitable or beneficial title has passed to the Buyer; (3) to make certain that certain technical requirements unique to trademark practice are met, such as the transfer of goodwill, in order to cure any such deficiencies in the Purchase Agreement; (4) sets forth the acknowledgment of rights; (5) contains representations and warranties; (6) sets forth the obligation to execute other confirmatory documents; (7) contains further assurances clauses; (8) sets forth possible retention of rights; and (9) can be used for general corporate purposes.

1. Assignment – Goodwill – United States of America

In the United States, a trademark cannot be assigned separate and apart from the “goodwill” it symbolizes. In addition to existing case law reinforcing this traditional requirement, the Lanham Act specifically requires that the goodwill associated with a trademark accompany any transfer of the trademark itself. Section 10 of the Lanham Act provides:

“[a] registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.”

A trademark is considered merely a symbol of goodwill and has no independent significance apart from the goodwill associated therewith. Attempts to transfer trademarks without the associated goodwill of the business have been characterized as “assignments in gross” and are invalid.

The public policy behind the requirement for transferring the goodwill of the business in conjunction with the trademark itself is to prevent use of a trademark with a different goodwill and different product which may result in deception upon the consumer public. The requirement that goodwill accompany the trademark ensures that a transferee’s use will not be deceptive and will not break the continuity of the goodwill associated therewith.

2. Assignment – Goodwill – Worldwide

However, unlike the United States, many jurisdictions throughout the world do not impose a similar goodwill requirement in conjunction with the assignment of trademarks. In fact, the majority rule worldwide is that trademarks may be assigned without the goodwill. There are basically three categories worldwide in which the transfer of trademarks may or may not be transferred with goodwill. These comprise countries which:

(a) allow unfettered assignments of trademarks; (b) allow assignments with or without the goodwill but impose an advertising requirement; and (c) impose a goodwill requirement such as the United States.

In view of the above and the conflicting laws with respect to the transfer of goodwill, the General Trademark Assignment Agreement should specifically address the category of goodwill being transferred.

3. United States Issues – Intent-to-Use Applications – Verified Statement of Use

The Lanham Act allows for the application of trademarks based upon a bona fide intent-to-use the trademark at a later date. Although the Lanham Act allows for the assignment of intent-to-use (ITU) applications, it also imposes specific requirements limiting the circumstances in which they may be validly transferred. Section 10 of the Lanham Act provides:

“[n]o application to register a mark under section 1051(b) (intent-to-use applications) of this title shall be assignable prior to … the filing of the verified statement of use….except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.”

Essentially, this statute requires that either use of the mark is made (along with the proper filing of the Verified Statement of Use with the Patent & Trademark Office) or the entire business associated with the intent-to-use trademark applications has been transferred before the assignment can be considered valid.

For those instances where intent-to-use applications cannot be made subject to the assignment, either because the application has not been converted to a use-based application by the filing of an Amendment to Allege Use or the Verified Statement of Use has not or cannot be filed because use has not and will not be made by the Seller and the Buyer cannot make bona fide use of the trademark within the required time periods, it may be necessary for the parties to agree to abandonment of the application by the Seller. Towards that end, the Buyer should negotiate an undertaking on behalf of the Seller to file the necessary documentation at the USPTO to expressly abandon the intent-to-use application and not to interfere with any new applications for the trademark filed by the Buyer. Potential difficulties in adopting this approach include:

(a) loss of priority; and (b) the potential for third party objections to any new applications for the trademark which may be subsequently filed based upon priority of use.

4. Intent-to-Use Applications – Amendment to Allege Use

If use of the trademark has been made, it may be possible to file an “Amendment

to Allege Use” before the application is published for opposition, together with evidence of the assignment in order to convert this intent-to-use application into a use-based application. Once this documentation has been received and officially processed by the United States Patent and Trademark Office, this would allow for assignment of the application.

5. Intent-to-Use Applications – Agreement to Continue Prosecution until Verified Statement of Use filed

If the application has already been published for opposition and it is too late to file an Amendment to Allege Use, the parties can simply agree to allow the prosecution of the intent-to-use application to continue unfettered by the Seller until such time as the Verified Statement of Use is filed. At that point, assignment of the intent-to-use trademark can take place.

It is critical that intent-to-use trademark applications are identified early so that the parties may afford them the proper treatment under current U.S. trademark practice. As it turns out, very often these trademark applications cannot be assigned at a Closing or post-Closing ceremony. This circumstance illustrates the importance of having a further assurance clause such that when the ITU applications are ready to be assigned, the Seller must execute the necessary documentation. This often takes place well after the Closing date.

1. Worldwide Recordal of Intellectual Property Rights

With the exception of all-stock deals or relatively similar stock transactions, the assets, including the trademark rights of the acquired company, need to be transferred into the name of the new owner in  each jurisdiction where such rights exist. Timely recordal of a change of ownership is critical to protect the ongoing validity and enforcement of intellectual property rights for several reasons, including:

(a) If a change of ownership is not promptly recorded, a misconception can arise in the marketplace as to the identity of the actual trademark owner, leading to a possible loss of rights where a trademark no longer functions as a true indication of origin. This is particularly true in the case of well-known trademarks, or in the case of other marks which are extensively used in their particular jurisdiction;

(b) The new owner may not be able to prosecute infringements, file oppositions or attend to renewals. For example, enforcement of a trademark can only be carried out under the authority of the owner of record or its exclusive licensee. If prompt injunctive relief is required, an undesired delay will result from a necessity to record the transfer of rights. Furthermore, the right of the trademark owner to obtain damages for acts of infringement which occurred before the transfer documents were recorded may be lost in certain jurisdictions.

(c) Fines and/or penalties may be assessed for late recordal of a transfer. In certain jurisdictions, there are time limits after which it may be too late to effect proper recordal of an assignment.

(d) The failure or delay in recording a transfer of ownership may result in a possible loss of royalties. For example, if a license is to be granted and recorded under a trademark, the licensor must be the owner of record. Therefore, a delay in recording the transfer can delay the date when the license agreement becomes effective; this, in turn, can delay manufacturing and/or sales. The resulting loss of royalties may not be recoverable. In a number of countries, a license agreement must be submitted to and approved by governmental authorities and the record owner should appear as the licensor. Delay in recording thus delays approval, with consequential loss of royalties.

(e) License recordals and registered user entries will no longer be current and may affect the validity of the use by a licensee and/or governmental approval for foreign exchange authorizations for remission of royalties.

(f) In the event an “equitable transfer” occurs without the requisite official change of “record ownership” at the relevant trademark offices throughout the world, the new owner will encounter enormous difficulties when confronted with the maintenance, sale, enforcement, hypothecation, licensing and/or use of the trademark rights. For example, proof of use (where required for maintenance of existing trademark registrations) may not be accepted when used by the current owner unless that party is now reflected as the “record owner”.

2. Separate Documents for Each Jurisdiction are Required.

In order to reflect the new owner of a trademark as the “owner of record”, it will be necessary in most jurisdictions for counsel to prepare separate assignment documents for  each  jurisdiction in which such right exists. In some jurisdictions, a certified copy of a “general” worldwide assignment may be acceptable. Trademark statutes exist in most countries of the world and provide a mechanism for the recordal of a change of ownership at a central registry. The form and substance of these documents vary from jurisdiction to jurisdiction, which underscores the advisability for the preparation of separate documents for each  jurisdiction. Such documents must be filed and recorded at the respective local registry. Furthermore, several multi-country registration systems exist, such as International Registration under the Madrid Protocol which has special requirements in order to properly record a transfer of title. In this respect, it is recommended that the acquiring company engage counsel experienced in the worldwide transfer of intellectual property rights and who is familiar with the local requirements for the preparation and recordal of documents necessary for each jurisdiction.

Other issues arise with respect to the filing and recordal of the assignment documents at the respective local registry. In particular, stamp, value added or  ad valorem  taxes may be assessed on the transfer or official actions may issue encompassing a potentially broad range of issues (e.g., “associated” trademarks, advertising and publication requirements) as discussed more fully below. Local requirements underscore the need for separate transfer documents to be prepared, executed and recorded in each jurisdiction in their native language. Furthermore, confidential information which the Buyer does not wish to disclose can be omitted as each transfer document can be prepared simply to satisfy the local requirements for transfer of the national trademark rights exclusively.

Where a significant number of intellectual property rights exist in multiple jurisdictions that are the subject of a merger or acquisition, the costs of simply preparing and recording the necessary documents can be substantial. Official fees are often assessed by the number of trademarks or patents included in the transfer. The burden of absorbing the costs of effecting recordal of the assignment or merger frequently is borne by the acquirer. However, this is not always the case. In some cases, the costs are factored into the purchase price and in other cases these costs are shared by the parties. For instance, the parties can agree to have the Seller absorb the costs for preparation of the documents while the Buyer pays for the charges incurred in connection with recordal of the assignment at the local Trademark Offices. Accordingly, it is advisable that the issue of costs are discussed by the parties and treated in the Purchase or Acquisition Agreement entered into during the course of negotiations.

D. COMMERCIAL LOAN DOCUMENTS

Where elements of a transaction are being financed by a commercial lender, all commercial loan and security documents should be executed prior to or at the Closing ceremony. These documents can include:

(a) Credit Agreements; (b) Loan and Guarantee Agreements; (c) Promissory Notes; (d) Escrow Agreements (e) Security Agreements; (f) Release Agreements pertaining to prior commercial security obligations among one or all of the parties; (g) Consents, Waivers and Subordination agreements; and (h) All other relevant Commercial Loan and Security Documents;

E. TRADEMARK SECURITY AGREEMENT

Like many commercial transactions, business transactions involving trademarks frequently require that the acquirer borrow funds to finance the transaction. In these instances, the lender providing the funds will seek collateral from the borrower to secure the loan as protection against the risk of default. When trademark rights are the subject of a security interest, the grant must take place in the form of a Trademark Security Agreement or similar document.

F. RELEASE AGREEMENTS

Prior to Closing, the presence of any liens, security interests or other encumbrances in trademarks will be revealed in one of two ways:

1. Representations and Warranties:  Carefully negotiated representations and warranties in the Purchase Agreement and/or General Trademark Assignment Agreement will require the Seller to confirm whether prior encumbrances exist against the trademark rights. If such encumbrances against the trademarks exist and are still valid and subsisting, Buyer’s counsel must require the disclosure of these security interests and, wherever possible, require the release of these security interests prior to or at the Closing ceremony.

2. Due Diligence:  Due diligence conducted on behalf of the Buyer, including searches of the relevant trademark registries, should reveal the existence of security interests which have been properly perfected against registered trademark rights. Where unregistered trademarks rights have been collateralized, however, a search of the Trademark Registry would not reveal such encumbrance.

For those trademark rights that have been made the subject of a security interest, it is critical to make certain that a Release of these rights is executed on behalf of the secured party in favor of the Grantor (i.e., the Seller). An obligation to obtain the release of these security interests should be made a condition precedent to the transfer. In most instances, the secured party will not be present at the Closing. If possible, the Release should be executed  Nunc Pro Tunc  to the date of the Closing. The rationale behind this is to make certain that when the Release is presented for recordal at the relevant Trademark Office, the assignment document does not bear an execution and/or effective date prior to the date of the Release. The Release should always be filed and recorded prior to the assignment document in order that the proper chronological chain of title is reflected on the Trademark Register.

Regardless of the manner in which prior security interests against registered or unregistered rights are discovered, arranging for execution of appropriate release documentation (either a Release Agreement or UCC-3) prior to or simultaneously at the Closing is critical. Furthermore, if the secured party is not the Seller, there is no guarantee that the secured party will necessarily release its security interest in the trademarks, depending upon the nature of its prior business with the Seller. In any event, execution of appropriate release documentation by the Seller should be made a condition precedent to performance on behalf of the Buyer.

G. OPINION LETTERS

Seller’s counsel is frequently required to deliver an opinion letter at Closing

concerning trademark issues in business transactions. For an acquiring or investing company, opinion letters are significant in that they are intended to bind the Seller to representations typically on the following:

(a) ownership; (b) validity; (c) enforceability; (d) absence of encumbrances; (e) non-infringement of third party rights; (f) non-infringement by third party; (g) effectiveness of proposed security documents for attachment, perfection and priority of a security interest; and, (g) valuation of the trademark portfolio.

Whenever possible, opinion letters concerning trademark rights should be

rendered by the Seller’s trademark counsel, who, in all likelihood, is already quite familiar with the portfolio. If necessary, extensive due diligence may need to occur before the rendering of an opinion letter. Opinion letters are equally critical in financing or licensing transactions where the trademark is serving as the primary asset or collateral. Separate valuation opinions may also be required to be delivered at Closing. These opinions are concerned with assessing trademarks using different accounting methodologies to determine the actual or fair market value of the trademark asset.

H. LICENSE AGREEMENTS

Many business use intellectual property, including trademarks, that is licensedfrom third parties. The method upon which trademark licenses may be transferred to a Buyer depends upon whether the transaction is a share purchase or an asset purchase. In the case of a share purchase, the Buyer’s position is relatively straightforward, since by acquiring the shares in the company, the Buyer will automatically acquire all pre-existing commercial agreements, including all trademark license agreements. In the case of an asset purchase, any existing trademark licenses will not pass automatically and will need to be specifically transferred to the Buyer. The possible methods of transferring a trademark license include:

A Novation Agreement between the Seller, the Buyer and the licensor.  The Buyer then becomes a party to the license in place of the Seller, and the Seller is released from its obligations under the license.

Assignment or sublicensing of the license  . The prior license may contain an express prohibition on the assignment or sublicensing of the license without the consent of the licensor. Any and all consents should therefore be obtained prior to Closing. The Buyer and Seller will need to determine whether the obligation to negotiate and obtain such consents falls on the Buyer or the Seller. The acquisition agreement may even provide that the Buyer is not obligated to close the transaction if consents from key licensors cannot be obtained.

I. ANCILLARY AGREEMENTS AND OBLIGATIONS

The acquisition agreement often specifies other obligations of the parties related to the acquisition. With respect to trademarks, a license from the Seller to the Buyer or vice versa, is not uncommon. This typically occurs in situations where the Seller is parting with one of its businesses but has certain trademark rights that are used in that business and the business it is retaining. In such a situation, the Seller can either retain the shared trademark right and license it to the Buyer post-Closing or sell it to the Buyer and take a license back. Additionally, short-term licenses may be needed to allow the Seller to phase out its use of certain trademarks post-Closing.

IV. CLOSING DAY

A. execution process b. payment c. delivery of related documents and files: , a. execution process.

(1) Location  – having a central location bringing together all therelevant parties for execution of the documents is helpful. There are distinct benefits in arranging for execution of all necessary documents, including confirmatory assignment documents, at Closing, including:

(a) by having a central location for execution of all the documentation, the presence of all necessary parties, including duly authorized officers of the Buyer and Seller, to complete execution of the documents results in greater efficiency in terms of time and reduced costs for the party bearing the expense, usually the Buyer.

(b) by not executing the documents piece-mail, counsel for the Buyer can immediately take possession of the confirmatory assignment documents and begin the process of dispatching the documents overseas for filing at the respective trademark offices. This is critical for two reasons:

(i) it eliminates the risk, which exists in many jurisdictions, that the Trademarks Office will impose fines or penalties for late submission of change of ownership documentation.

(ii) it eliminates the risk of rejection of the documents in their entirety for late submission or “staleness”. This is especially true if the documents are backdated or bear an effective date earlier than the date of actual execution and the jurisdiction has a particularly short filing deadline.

(2) Availability of notaries:  by having all of the confirmatory assignment documents executed at the Closing or post-Closing ceremony, the parties will be able to take advantage of the presence of attesting notaries and witnesses as well as their designated signatories. When executing confirmatory assignment documents for purposes or recordal at national trademark offices, very often these documents require notarization and/or consular legalization or authentication by Apostille. For those countries that require consular legalization, especially in large transactions, by having both the Seller and Buyer execute all the confirmatory assignment documents in one location, the notarial acknowledgments will be uniform. This, in turn, will expedite the process of authentication, certification of the notarial acknowledgment and consular legalization at the Department of State or individual foreign consulates.

(3) Authorization of Officers to Execute Documents:  The parties should require documentary evidence of the representations of both Buyer and Seller to legally execute the Closing documents and bind their companies. This evidence might include a Power of Attorney, a Board of Directors Resolution, Certificates of Incorporation or By-Laws. In terms of recording the assignment of rights abroad, several jurisdictions, especially in Latin America, require detailed notarized documents providing that the officer who executed the assignment documents on behalf of the company (whether Buyer or Seller), has been appointed as an agent of the company authorized to act on its behalf or appointed as an officer pursuant to a specific Resolution of the Board of Directors or other documents. In most instances, this will require the completion of detailed information such as the date of the resolution and/or the date that the company was incorporated.

(4) Country/Place of Execution:   The place of execution will affect the manner in which the documents are notarized and/or legalized. In terms of a worldwide recordal program, having all the documents executed and subsequently notarized by notaries who are qualified in the same county or country will hasten the legalization process in that the notarials can be certified by at a single County Clerk’s office. By not doing so, having several documents sent to several different counties for certification can result in significant delay.

(5) Contingencies:  Trademark counsel, whether representing the Buyer or Seller, should be prepared for all contingencies which may arise at a Closing with respect to execution of the documentation. Such contingencies can include:

(a) Errors in Preparation:  Due to the jurisdictional nature in which trademark rights arise, the preparation of an extraordinary amount of documentation is required in terms of preparing for a worldwide assignment recordal. As such, if an error in preparation is discovered at the Closing, trademark counsel should be prepared to immediately correct such error(s) in order to promptly arrange for execution of the new, correct document. Towards that end, counsel should make certain in advance that:

(i) Adequate staff is available to implement such changes; Electronic versions of all documents are at counsel’s disposal in order to promptly implement such corrections.

(b) Errors in Execution:  In terms of worldwide trademark assignment recordal programs requiring execution of what can be an extraordinary amount of documentation, it is inevitable that mistakes in execution will occur. This situation arises more frequently when several different parties are required to execute the same document, such as officers of each party, attesting witnesses and notaries. As discussed above, counsel should be in a position to have adequate staff and electronic versions available to promptly arrange for the preparation of new documentation.

(6) Corporate Seals:  Corporate seals for each entity should be available at the Closing. Trademark counsel should make certain well in advance of the Closing date that either the officers of each company bring such seals to the Closing or that new seals are promptly ordered and available by the Closing date. Although affixing corporate seals can occur at any time subsequent to the Closing, this may delay the filing and ultimately the recordal of the assignment documents at the Trademark Registries. The failure to affix corporate seals can result in rejection of the assignment documents in several jurisdictions.

The following concepts should be kept in mind in terms of transfer

1. Check/wire transfer:  all pertinent banking particulars should be available to the parties, especially in the context of a wire transfer, so that the appropriate funds can be transferred to the Seller without undue complication;

2. Confirmation of receipt:  confirmation of receipt of such funds should be available and delivered to the Seller upon request.

3. Escrow Accounts:  established.

C. DELIVERY OF RELATED DOCUMENTS AND FILES:

1. Files  :  From a trademark standpoint, relevant files pertaining to the

trademark rights should be delivered to the new owner, to the extent possible, at or post-Closing, which can include:

(a) pending application files:  should be delivered to counsel for Buyer in order to make certain that all actions and/or deadlines are met. (b) opposition/cancellation files;  (c) litigation files;  (d) prior chain of title files;  (e) pending renewal files;  (f). license files; and (g) general trademark files. 

In arms length transactions, Buyer’s trademark counsel will often be different from that of the Seller. Therefore, Buyer’s counsel should prepare a simple, but formal letter to Seller’s counsel requesting the immediate transfer of all files subject to the transaction.

2. Certificates of Registration:  To the extent possible, Certificates of Registration for each trademark registration should be delivered to the Buyer at Closing or shortly thereafter. Depending upon the specific portfolio, rights in the trademark may have been registered several years or decades ago, and therefore, it is not unusual for many of these certificates to have been lost or destroyed. In order to record the assignment in favor of the Buyer in those jurisdictions which require submission of the Certificate of Registration, it will be necessary to obtain certified copies of the Certificate of Registration from the Trademarks Office. In large transactions, this could result in significant additional expenses, especially in less sophisticated jurisdictions, which the parties should anticipate. If not negotiated in the Purchase Agreement or General Trademark Assignment Agreement, this additional expense will usually be borne by the Buyer.

3. Letters to local trademark counsel re: file transfer:  Where several trademark applications, renewal filings or conflicts are pending worldwide and if the Buyer prefers to use local counsel differing from that of the Seller, Buyer should notify its preferred counsel to instruct Seller’s counsel to immediately transfer such files. Buyer’s preferred counsel should then file the appropriate substitution of counsel documentation with the Trademarks Office where necessary so as not to interfere with the prosecution of the applications when the assignment documents are filed. At the very least, notice to all counsel by Seller’s counsel should be sent out advising of the change in ownership and responsibility.

V. POST-CLOSING ISSUES:

A. immediate docketing of trademarks/action dates: b. handling actions (official actions/renewals/payments) c. review of files to re-assess value of trademarks/major markets: d. filing and recordal of confirmatory assignment documents in each jurisdiction where trademark rights exist e. filing and recordal of confirmatory documents to record a merger and/or change of name f. security interests, a. immediate docketing of trademarks/action dates:.

It is critical that upon possession of the transferred files, an immediate review to determine when renewal dates, terms, responses to official actions and other “action” dates are due. In addition to the particulars of the trademark (mark, registration number, registration date, etc.), these “action” dates should be immediately uploaded into a computer database in order to alert counsel to any impending actions.

B. HANDLING ACTIONS (OFFICIAL ACTIONS/RENEWALS/PAYMENTS)

Any and all trademark applications and registrations requiring immediate action should be brought to the new owner’s attention in order to prevent the loss of such rights. Very often, the new owner will conduct a complete review of which trademarks it is interested in maintaining, however, this process can very often be quite lengthy. Therefore, it is critical that the new owner be advised of immediate action dates in order that their instructions may be timely received. This obligation on the Seller should be a condition of the sale and include a post-Closing undertaking by Seller to assist Buyer in taking any and all steps necessary to preserve and protect the trademark rights.

C. REVIEW OF FILES TO RE-ASSESS VALUE OF TRADEMARKS/MAJOR MARKETS:

Buyer may wish to eliminate any unwanted registrations or applications subsequent to the acquisition. They can abandon them at the time of renewal and just not record assignments against them.

D. FILING AND RECORDAL OF CONFIRMATORY ASSIGNMENT DOCUMENTS IN EACH JURISDICTION WHERE TRADEMARK RIGHTS EXIST

(1) Filing expenses:  Expenses associated with the filing and recordal

of confirmatory assignment documents to record the Buyer as the official “owner of record” can, especially in transactions where worldwide trademark portfolios are being assigned, be quite expensive. There are several costs associated with the filing and recordal of the documentation, including:

i. government fees:  often assessed on a per trademark basis; ii. local counsel fees:  in connection with filing the assignment recordal application iii. taxes;  depending upon the jurisdiction in the form of ad valorem, value added or stamp duties; iv. translation fees:  upon filing or in connection with the official publication of the assignment (if required); v. publication fees:   in connection with local advertising or publication of the transfer in a local newspaper or periodical (if required); vi. foreign consular legalization or authentication charges;  vii. charges for obtaining duplicate or replacement Certificates of Registrati on:  if required; and viii. recordation of any change of address:  if required.

(2) Consideration:  Several jurisdictions require that a specific monetary consideration be recited in the Deed of Assignment for recordal purposes. If the trademarks are assigned as part of a transaction involving the transfer of other assets, the consideration for the transfer is some portion of the consideration for the entire transaction. Prior to filing, trademark counsel should consult with the new owner of the trademarks to determine an appropriate consideration to be recited in each Deed of Assignment for those jurisdictions where it is mandatory to recite same. Trademark counsel should be familiar with the possible local tax requirements when advising the new owner so as not to trigger any unanticipated local tax assessments upon the transfer. Additionally, where tax assessments cannot be avoided upon the transfer, trademark counsel and Buyer should evaluate and determine the specific amount to be paid to the local tax authorities well in advance of filing so that the Buyer can factor this amount into its budget.

(3 Legalization/Authentications:  In several jurisdictions, prior to filing the confirmatory assignment documentation, it will be necessary to arrange for the consular legalization and/or authentication of the confirmatory assignment documentation. While some embassies undertake the process of legalization in an expedient fashion, many embassies, especially from less sophisticated jurisdictions, have a slow turnaround time. Additionally, it is often necessary to have documents which require legalization to be sent to a County Clerks’ office to certify that the notary is, in fact, a notary public in good standing in that country and/or to have the documents sent to the Department of State as well.

(4) Filing Process:  When the confirmatory assignment documents have been executed, notarized and legalized (where necessary) and after a careful review to determine that no information or signatures are missing, the documents are ready to be filed at the respective trademark offices. Trademark counsel should consider the following issues when forwarding the assignment documentation to local counsel for filing:

(a) pending trademark applications:  in order to not interfere with the prosecution of the application, trademark counsel should consider using the same agent for purposes of recording the assignment. If trademark counsel would prefer to use a different agent than the one prosecuting the application, counsel should coordinate its effort with the agent of record and its preferred agent so as not to interfere with the prosecution.

(b) pending renewal applications:  where a renewal application is pending in the name of the new owner, the assignment documentation must be filed with the same agent in order that the agent can prove that the entity renewing the registration is, in fact, the new owner.

(c) deadlines:  certain jurisdictions require the filing of the assignment documentation within a certain period of time from the date of execution. For example, some British law countries still operating under the 1938 Trade Marks Act require assignments made without goodwill to be filed within six months of the date of execution for advertising purposes. Other countries which impose a deadline upon filing of assignment documents include:

(d) official actions:  It is practically inevitable that when arranging for the recordal of an assignment against hundreds or even thousands of trademarks on a worldwide basis, objections and official actions will issue by the Trademarks Office. Among the types of official actions to be anticipated are:

(i) owner of record:  the Trademark Registry does not reflect the Seller (assignor) as the official “owner of record”. For whatever reason, the Seller never undertook to record itself as the new owner against the trademark rights in a particular jurisdiction. Accordingly, the Registrar will require that documentation evidencing the assignment from the previous owner to the Seller be submitted together with the new assignment documentation.

(ii) “association” requirements:  the trademark laws of several jurisdictions have a requirement in place known as the “association” requirement. Under the association requirement, if an application for assignment is filed only against some, but not all, trademarks owned by an assignor which it has registered at a particular trademark office, the Examiner may issue an official action claiming that the assignment cannot proceed due to the existence of “associated” trademarks. In most instances, the Examiner determines that a mark is associated when there is a common element or word contained in the marks. In order to overcome this objection, there are normally three options available:

• Prepare new assignment documentation for execution by the parties against the associated trademarks which were not subject to the assignment.
• File a petition with the trademark office in an effort to “break the association” between the trademarks, arguing that the trademarks should not be “associated” and recordal should proceed uninhibited.
• Commence cancellation proceedings against the associated trademarks.

(iii) change in local practice:  the requirements of local trademark practice shift on a fairly regular basis which may result in requests for additional forms, Powers of Attorney, Affidavits or other documents to be submitted with the assignment documents. In some instances, new assignment documents are required altogether.

(iv) missing/lost documents:  It is not uncommon for Trademark Offices to temporarily misplace or lose entirely a complete set of assignment documents, especially in less sophisticated jurisdictions. Regardless of fault, a new set of assignment documents can be executed by the parties and submitted to the Trademark Office or in certain cases, certified copies will be accepted.

(v)change of address:  the address of the Seller as reflected on the official registry differs from that contained in the assignment document. Accordingly, a Declaration of Change of Address must be filed in order to overcome this objection and allow the recordal of the assignment to proceed.

(vi) license recordal or registered user entry in name of Seller:  when the Seller is recorded as a licensor/licensee or registered user, the Examiner may require evidence of the novation of the license or registered user agreement to reflect that the Seller is no longer the licensor or licensee of the mark.

Regardless of the type of official action which may issue, one dominant theme is clear. Officers (or former officers) of both the Buyer and the Seller should be available to execute whatever additional documentation is requested by the local Trademark Office to complete the transfer of “record title” to the Buyer.

(e) Proof of recordal:  In most jurisdictions, proof of recordal of an assignment, merger or change of name is issued within six months to one year. In other jurisdictions such as India or Italy, proof of recordal may not be issued for approximately 4-5 years. In any event, when the proof of recordal is received, this document should be carefully reviewed to determine the following:

the name and address of the new owner is correctly reflected on the certificate;

the date of the recordal is stated;

the correct application and/or registration numbers are recited on the certificate.

E. FILING AND RECORDAL OF CONFIRMATORY DOCUMENTS TO RECORD A MERGER AND/OR CHANGE OF NAME

Although many of the issues discussed above pertaining to recordal of

confirmatory assignment documents remain true for the recordal of a merger and/or change of name, such as the assessment of government fees on a per trademark basis, as a general rule, fewer documents need to be prepared and executed by the parties for recordal purposes. In many jurisdictions, recordal of a change of name and/or merger can be accomplished with the following documents:

(a) Power of Attorney: usually executed by the Buyer only;

(b) Certificate of Merger/Change of Name: issued by the appropriate Secretary of State’s office (if a U.S. corporation) or similar governmental authority outside the U.S.

Unlike an assignment, however, all assets of the combined companies pass to the new entity by operation of law and therefore, recordal of a merger/change of name must be recorded against all active trademark applications and registrations which stand in the name of the Seller at a particular Trademark Registry.

F. SECURITY INTERESTS

Increasingly, security interests in intellectual property and, in particular, trademarks, are becoming more and more common. Towards that end, perfection of security interests in trademarks worldwide is becoming more common. Recordal of security interests in trademarks is a well-established practice in only the most sophisticated jurisdictions and even there, similar to the United States, the law in this area is not well settled. However, for those jurisdictions outside the United States where security interests have been recorded at the Trademarks Registry, it may be necessary to seek the opinion of local counsel in order to determine whether release documentation prepared for recordal at, for instance, the USPTO, will be sufficient to release the security interest under local law.

(i)   Perfection of security interests in trademarks in the United States:  With respect to U.S. common law and U.S. State trademark registrations, Article 9 of the UCC would apply and the appropriate UCC-1 forms should be filed and perfected at the relevant County Clerk’s Office and/or Secretary of States office. With respect to federally registered rights, the landscape concerning perfection of security interests still remains unclear. While the Lanham Act makes no direct reference to recordation of security interests, the USPTO will accept and it is now common practice to record security interests in trademarks at the assignment division. At the very least, recordation at the USPTO provides constructive notice to subsequent purchasers for value.

(ii) What countries recognize perfection of security interests:  As the value

of intellectual property rights are more widely recognized now than ever before, more and more companies are placing a premium on the protection of these rights, including trademarks. Companies with substantial worldwide portfolios are increasingly offering not only their domestic trademark rights as security to finance a transaction, but increasingly, their international rights as well. Towards that end, secured parties would be well advised to seek perfection of these security interests at the trademark offices in several, if not all, of the jurisdictions in which the trademark security interest has been granted. However, at this time, only the most sophisticated jurisdictions recognize the creation of security interests in trademarks  and  offer a mechanism for perfection of same at the Trademark Office.

(iii) Will the security documents suffice to create and perfect the security interest in the relevant jurisdictions?  – Subsequent to identifying those jurisdictions which offer a mechanism for perfecting a security interest in trademarks, it is critical to determine whether the General Trademark Security Agreement or other trademark security documents will be accepted for recordal. While some jurisdictions will accept a standard security agreement, it may be necessary to effect certain amendments to the Agreement in order to create a valid security interest under local law. A common example of this would be changing the “governing law” provisions to that of the jurisdiction under which perfection is sought. In many instances, it may be necessary for the parties to execute several new trademark security agreements tailored specifically for creating and perfecting trademark rights in certain jurisdictions. Towards that end, it may be necessary to engage local counsel early to determine whether the Trademark Security Agreement will suffice for purposes of creating and perfecting a valid security interest in trademarks under local law.

(iv) Supplemental documentation to the Trademark Security Agreement  : In addition to amendment or possibly creating a new Trademark Security Agreement in compliance with local law, it is often the case that additional documents will need to be executed by the parties and submitted together with the Trademark Security Agreement. Such documents can include:

(1) Application forms; (2) Powers of Attorney; (3) Short-Form Security Agreements; (4) Commercial Security Agreements for filing at the municipal level (if necessary); and (5) Various other forms required under local trademark and/or commercial practice.

(v) Obtaining opinion letters from local counsel  : In order to make certain

that the secured party is not blindly undertaking the ministerial act of perfecting the security interest, it may be worthwhile to obtain a formal opinion letter of local counsel discussing some or all of the following points:

(1) whether any prior liens or encumbrances have been recorded against the trademark; (2) whether a valid security interest is created by the Trademark Security Agreement under local law; (3) whether the security interest is capable of being perfected at the local Trademark Office; and (3) subsequent to perfection at the Trademark Office, whether the security interest is capable of being enforced against third parties;

In what countries should perfection take place/cost assessment:  Simply

determining which jurisdictions recognize perfection of security interests in trademarks and identifying what supplemental documentation would be needed is not enough. A thorough cost-assessment of the value of the trademarks subject to the security interest may be worthwhile. In the end, it may not be worthwhile to proceed in a jurisdiction where notoriety or sales in the trademarks do not exist. Factors to consider in this determination are:

(1) The number of trademarks subject to the security interest; (2) The government fees in perfecting the security interest; (3) Local counsel fees in preparing an amended or new Trademark Security Agreement, supplemental documentation, opinion letters and handling the perfection of the security interests; (4) The value of the trademarks as determined by notoriety and/or sales in the products bearing the trademarks; (5) The sophistication of the jurisprudence in a particular jurisdiction; and (6) Other standard valuation benchmarks in determining the value of trademark rights.

(vii) time considerations:  In addition to cost considerations, time is also a factor when considering perfection of security interests abroad. While certain jurisdictions can typically record the security interest at the Trademark Office within 3-6 months, there are still many jurisdictions which typically require several years before recordal is officially reflected on the register. Furthermore, expedited recordal procedures are generally not in place. Therefore, in terms of obtaining the benefits of perfection by providing notice to third parties, proceeding in some of these jurisdictions may not be worthwhile.

(viii) events of default/enforcement procedures:  In the event of a default, trademark counsel should be aware of what steps must be taken in order to enforce the security interest and foreclose on the trademark assets. If the defaulting party is unwilling to assign rights in the trademark back to the secured party, the secured party may need to bring a court action under local commercial or trademark law.

The key to a successful Closing is, preparation, organization and anticipation. Anticipation results in no or few surprises at the Closing ceremony. Preparation leads to a more mechanical and faster process. Good organization ensures that every issue and step in the process is dealt with so that no open issues remain and all required documents are executed and delivered. Clients will generally be impressed by and grateful for a smooth and uneventful Closing process.

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0300
• Section 302

302 Recording of Assignment Documents [R-07.2015]

37 cfr 3.11  documents which will be recorded..

• (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
• (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
• (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

37 CFR 3.58  Governmental registers.

• (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
• (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.

37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.

302.01 Assignment Document Must Be Copy for Recording [R-08.2012]

37 cfr 3.24  requirements for documents and cover sheets relating to patents and patent applications..

• (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
• (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.

302.02 Translation of Assignment Document [R-08.2012]

37 cfr 3.26  english language requirement..

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Application [R-07.2015]

37 cfr 3.21  identification of patents and patent applications..

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]

35 u.s.c. 293   nonresident patentee; service and notice..

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

37 CFR 3.61  Domestic representative.

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .

302.06 Fee for Recording [R-10.2019]

37 cfr 3.41  recording fees..

• (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
• (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
• (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet  [R-10.2019]

37 cfr 3.28  requests for recording..

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

37 CFR 3.31  Cover sheet content.

• (1) The name of the party conveying the interest;
• (2) The name and address of the party receiving the interest;
• (3) A description of the interest conveyed or transaction to be recorded;
• (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
• (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (6) The date the document was executed;
• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
• (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
• (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
• (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
• (1) Indicate that the document relates to a Government interest; and
• (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see §  3.41(b) ).
• (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
• (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
• (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
• (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
• (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
• (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
• (4) Indicate the date the joint research agreement was executed.
• (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:

• (A) The name of the party conveying the interest;
• (B) The name and address of the party receiving the interest;
• (C) A description of the interest conveyed or transaction to be recorded;
• (D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (F) The date the document was executed; and
• (G) The signature of the party submitting the document.

For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

• (A) assignment;
• (B) security agreement;
• (C) merger;
• (D) change of name;
• (E) license;
• (F) foreclosure;
• (H) contract; and
• (I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]

37 cfr 3.27  mailing address for submitting documents to be recorded..

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

302.09 Facsimile Submission of Assignment Documents [R-11.2013]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent matters submitted by facsimile must include:

• (A) an identified application or patent number;
• (B) one cover sheet to record a single transaction; and
• (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

• (A) Assignments submitted concurrently with newly filed patent applications;
• (B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
• (C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

302.10 Electronic Submission of Assignment Documents [R-10.2019]

• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or

37 CFR 1.4  Nature of correspondence and signature requirements.

• (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
• (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
• (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
• (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
• (3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
• (i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
• (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
• (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.

Any assignment related document submitted by EPAS must include:

• (A) an identified application or patent number; and
• (B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.

The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.

For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

• 301.01-Accessibility of Assignment Records
• 302.01-Assignment Document Must Be Copy for Recording
• 302.02-Translation of Assignment Document
• 302.03-Identifying Patent or Application
• 302.04-Foreign Assignee May Designate Domestic Representative
• 302.05-Address of Assignee
• 302.06-Fee for Recording
• 302.07-Assignment Document Must Be Accompanied by a Cover Sheet 
• 302.08-Mailing Address for Submitting Assignment Documents
• 302.09-Facsimile Submission of Assignment Documents
• 302.10-Electronic Submission of Assignment Documents
• 303-Assignment Documents Not Endorsed on Pending Applications
• 304‑305-[Reserved]
• 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
• 307-Issue to Non-Applicant Assignee
• 308-Issue to Applicant
• 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
• 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
• 311-Filing of Notice of Arbitration Awards
• 312-[Reserved]
• 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
• 314-Certificates of Change of Name or of Merger
• 315-Indexing Against a Recorded Certificate
• 316-[Reserved]
• 317.01-Recording Date
• 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
• 317.03-Effect of Recording
• 318-Documents Not to be Placed in Files
• 319-[Reserved]
• 320-Title Reports
• 321‑322-[Reserved]
• 323.01(a)-Typographical Errors in Cover Sheet
• 323.01(b)-Typographical Errors in Recorded Assignment Document
• 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
• 323.01(d)-Expungement of Assignment Records
• 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
• 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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Assignments overview and pitfalls to beware!

03 December 2012

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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Trademark Assignment

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A Trademark Assignment is a document used when one person owns a registered trademark (like a brand name or logo ) and wishes to transfer the ownership of that trademark to another person. Written Trademark Assignments are important, as it's best for both parties to have a memorialized record of the assignment.

Trademark Assignments allow the easy transfer of the mark. They contain all the information needed to record the assignment with the United States Patent Office (USPTO) . Recordation with the USPTO is necessary for all registered trademarks that are being transferred, and it is a good way to ensure everything flows smoothly with the assignment.

This is different than a Licensing Agreement , as here, the entirety of the mark is being transferred to a new party. In a Licensing Agreement, the mark still belongs to the original owner, but the other party pays royalties for permission to use it.

This is also slightly different than an Intellectual Property Release . Although that form could be used for a trademark, generally it is used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and instead, the copyrighted works are simply "released," or given, to another party.

This document can also be distinguished from an Intellectual Property Permission Letter , as there, one party is writing to request permission to use the intellectual property of another. A Licensing Agreement or Intellectual Property Release or even Trademark Assignment could come after the Intellectual Property Permission Letter, but that is not a formal legal document, and is instead, a template for a letter to be used to have the initial conversation about intellectual property use.

How to use this document

This document can be used to transfer the ownership of an existing trademark or when an individual would like an existing trademark transferred to them, as long as the owner agrees. It should be used when both parties understand that the trademark will be completely assigned (in other words, this is not a license, as noted above, and no royalties will be due after the assignment) and wish to create a record of their agreement.

This document will allow the parties to fill in details of the mark to be transferred, as well as ensure that everything needed for recordation with the USPTO is present. Either party - either the person assigning the trademark or the person receiving the trademark - can fill out this form.

Once the form is complete, the parties can undertake the following steps:

1) Sign and execute the form in front of a notary (both parties)

2) Have the notarization completed

3) Record the Trademark Assignment with the United States Patent and Trademark Office

Applicable law

Trademark Assignments are related to the trademark law of the United States, which is covered by a federal statute called the Lanham Act. The section of the Lanham Act specifically referring to assignments is 15 U.S.C. § 1060(a).

How to modify the template:

You fill out a form. The document is created before your eyes as you respond to the questions.

At the end, you receive it in Word and PDF formats. You can modify it and reuse it.

A guide to help you: How to Register A Trademark

Other names for the document:

Agreement to Assign Brand, Assignment for Trademark, Brand Assignment, Intellectual Property Assignment Agreement, Logo Assignment

Country: United States

Intellectual Property and New Technologies - Other downloadable templates of legal documents

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TMEP 501.01(a): Assignability of Intent-to-Use Applications

October 2017 Edition of the TMEP

TMEP Chapter Index Chapter 500: Change of Ownership 501 : Assignment of Marks 501.01 : Assignability of Marks in Applications and Registrations

Previous: §501.01 | Next: §501.01(b)

501.01(a)    Assignability of Intent-to-Use Applications

In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b) , the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)    or a statement of use under 15 U.S.C. §1051(d) ), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing.  Section 10 of the Trademark Act, 15 U.S.C. §1060 ; 37 C.F.R. §3.16 .

The primary purpose of this provision is to ensure that a mark may only be assigned along with some business or goodwill, and to prevent "trafficking" in marks.

As a general rule, the United States Patent and Trademark Office ("USPTO") does not investigate or evaluate the validity of assignments.  Therefore, the examining attorney must issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 only if:

• (1) The application itself includes a statement indicating that the assignee is not a successor to the original applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing; or
• (a) The assignment is executed before the filing of an allegation of use;
• (b) The applicant submits the assignment document for inclusion in the application record in the Trademark database, and not just to the Assignment Recordation Branch; and
• (c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.

The examining attorney should not require the submission of assignment documents to determine compliance.

If the examining attorney issues an inquiry, the applicant’s statement that the assignment was in compliance with the cited provision of §10 is sufficient to resolve the issue.  This statement may be entered through an examiner’s amendment.

The assignment of an intent-to-use application to someone who is not the successor to the applicant’s business before filing an allegation of use renders the application void, and any resulting registration must be cancelled. Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); cf. Amazon Techs., Inc. v. Wax, 95 USPQ2d 1865, 1872 (TTAB 2010) (finding "the assignment from one joint applicant to another, where the assignee joint applicant was and remains an owner of the application is more in the nature of 'relinquishment' of ownership rights by one joint owner than a true 'assignment' to a different legal entity, and, thus, it is not prohibited under §10 of the Trademark Act").

• Practical Law

Transferring intellectual property rights: avoiding the pitfalls

Practical law uk articles 2-504-4154  (approx. 11 pages).

• What IPR are from a legal perspective.
• The practicalities and consequences of the registration of registrable IPR transactions, and the due diligence to be conducted.
• How to identify the relevant IPR to be transferred.
• How to document the transfer.
• Some important issues concerning liability arising on the transfer of IPR.

Legal nature of IPR

Confidential information, community rights, registering assignments of ipr, administrative and costs issues.

• It was not practicable to register the assignment within the six-month time limit.
• The assignment was registered as soon as practicable thereafter.

Protecting mortgages and charges

Registered rights due diligence.

• Carry out an initial search of the register to check that the seller is the registered proprietor. Check for any earlier assignments to that seller and investigate thoroughly any such assignments and the circumstances surrounding them. If there are any such assignments, consider taking an assignment of the seller's causes of action for failure to deliver good title against his own seller (if any still remain).
• Carry out a second search on the morning of completion as the IPO/OHIM update their registers at midnight following each working day.
• Register the transaction on the day it completes, wherever possible, or as soon as possible thereafter.
• Require the seller to assign with full title guarantee (see " Liability " below).

Identifying the relevant IPR

• Identify the relevant registered IPR which are to be transferred.
• Produce a conceptual definition of the non-registered IPR which are to be included in the sale, such as "all the company's know-how (whether recorded or not) and documentation relating to the process of manufacturing xyz".
• Identify which (if any) of the IPR being transferred will still need to be used by the seller or its group after the transaction has taken place, and determine how such access is to be secured (this will usually require some form of licence back).
• Identify which IPR are not going to be transferred to the buyer, and consider whether or not to write to the buyer explaining precisely which IPR are not going to be included in such a sale and why. This can stop arguments occurring later as to what was meant to be included or excluded, and should also make an action for rectification (correction) of the assignment agreement much more difficult for the buyer to win.
• Properly instruct the seller's negotiating team and lawyers as to the matters above.

Documenting the transaction

Assigning by deed, method of assignment in a sale and purchase agreement, what should be assigned in an spa, country-specific agreements, patent attorney files.

• The person disposing of the IPR has the right to dispose of them.
• The person disposing of the IPR will do all he reasonably can do, at his own cost, to give the assignee the title he purports to give ( section 2(1), 1994 Act ).
• Charged or encumbered the IPR with any charge or encumbrance, which still exists at the time of the present disposition.
• Granted any third party rights in relation to the IPR, which still subsist at the time of the present disposition.
• Allowed anyone else to do so.

Excluding liability

Sale of goods act 1979, mortgages and charges of ipr.

• An outright assignment of the legal title in the IPR to the lender.
• A right of redemption; that is, the right to have the legal title transferred back to the borrower once repayment and other obligations have been fulfilled.
• Pending exercise of the right of redemption by the borrower, some form of licence back from the lender to the borrower to enable the borrower to use the IPR in its business.
• The charging clause.
• A transfer mechanism to allow the transfer of the IPR in the event of default.
• A range of negative obligations on the borrower not to grant conflicting security or other interests in the charged IPR.

Practicalities of assignment: an overview

Problems with the ipr registration system.

• Trade Marks
• Confidentiality
• United Kingdom

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Trademark assignment agreements: managing rights post-brexit.

Since the UK’s departure from the EU, there has been a significant rise in the number of trademark assignment recordals against UK registrations taking place as EU trademark owners are now required to manage these rights separately, says Trademark Paralegal Megan Taylor.

In order for transfers of ownership to be recorded, businesses must provide a copy of the relevant document assigning their ownership, to ensure that a valid transaction has taken place under the laws of England and Wales. It is important to ensure the transfer is a valid transaction as the mark could be the basis of, or subject to, future disputes where questions around its validity could be raised and result in a possible loss of costs. 

What makes a transaction valid in the UK?

Despite s.24(3) of the Trade Marks Act 1994  (TMA) stating that a trademark assignment is considered effective if it is in writing and signed on, or behalf of, the assignor (or their representative), there are other laws relating to the transfer of property which must be considered; for example, statutes that pre-date the TMA. One such statute is the Law of Property (Miscellaneous Provisions) Act 1989 which sets out the requirements for a valid Deed for transfers of ownership between individuals. Similarly, the Companies Act 2006 provides guidance in relation to Deeds executed by a company.

It is also important to note that while EU member states can rely on their codified national laws for transferring property within the EU, the UK also incorporates Common Law into its judicial system. The relevant laws here being the Law of Contracts.

Deeds v Assignments

When ownership of a trademark registration is transferred as part of a larger transaction, a copy of the relevant extract of the larger agreement is sufficient to proceed with the recordal. 

However, in other instances, there may be no formal transaction in place or a confirmatory document may be required to simplify or clarify the transfer of any IP right specifically. In these cases, a separate trademark assignment (or other IP assignment) document should be drafted for execution by the parties.

In the UK, there are two types of document that enable the transfer of ownership of property – a deed of assignment and an assignment agreement, the latter also being known as a contract. While both documents are typically in writing, contain a title to confirm the document type and express the intentions of both parties, one of the most distinguishable requirements for a deed is the execution. In addition to the document being signed by both parties, for a deed to be effective both signatures must also be fully witnessed owing to there being no consideration.

Alternatively, the relevant parties may have an assignment agreement drafted. The laws governing contracts in the UK derive from the courts and are therefore formed under Common Law. In order to be a valid contract, there must be four main elements: an offer, acceptance of that offer, an intention to create legal relations and consideration (in other words, what each party gains from the contract). When it comes to formalising this contract, it is vital that the consideration is contained in the document, even if the sum is £1. If this is not included, the document cannot be treated as a valid contract.

Change of name requirements 

Furthermore, it should be noted that where a company number or legal status of a business has changed as the result of a change of name, the transaction should be recorded as an assignment and not a change of name. This is due to the fact that the entity that owns the mark has changed and is no longer the same entity as the prior owner. However, there is no need to evidence this change with a Deed or Agreement to record this at the UKIPO, as a commercial extract will suffice.

Key points to consider

When reviewing ownership portfolios or selling IP post-Brexit, it is important to consider the following:

• Is there consideration?  Determine whether you are transferring the property as a Deed or under an Agreement – different document types may be more beneficial depending on the circumstances of the transaction.
• Seek advice before executing.  Our local associates can confirm whether the document is compliant with national laws. With our reach, we may also be able to provide a suitable single document to cover multiple jurisdictions, saving you and/or your client(s) a huge amount of associated costs.
• If unsure, just ask.  We are at your disposal and happy to help facilitate easy execution, provide legal certainty, and save time in the long run.
• Take caution with local legal wording.  Even if something is titled a ‘Deed’, it is not always the case.
• Be careful not to exclude crucial details.  For example, something seemingly insignificant missing from an assignment document can render the whole agreement invalid. In the UK, even the phrase “ In consideration of £1 (one Pound Sterling) the receipt of which is hereby acknowledged ”, or a “peppercorn” as it is nicknamed, as a metaphor for a very small cash payment or other nominal consideration, used to satisfy the requirements for the creation of a legal contract.

Get in touch with our UK Trademark experts for further advice on how to manage trademark assignments post-Brexit.

Megan Taylor is a Trademark Paralegal and Luke Portnow is a Trademark Attorney at Novagraaf in the UK.

Contact us for more information

Latest news, webinars & events, trademark event: we hope to see you at inta 2024.

The IP sector's use of emerging technologies, such as artificial intelligence (AI), looks set to be a key talking point at this year's Annual Meeting of the International Trademark Association (INTA 2024). 

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Brand development and ip: building your family of marks.

After registered protection is obtained, how can an IP right holder further develop and strengthen a brand? One way is by developing a family of marks.

EU publishes latest statistics on counterfeit goods seizures

The EU Intellectual Property Office (EUIPO) and Taxation and Customs Union (DG TAXUD) have published their annual report on seizures of counterfeit goods in the European Union. Here, we summarise some of its key findings.

For more information, please contact us

Trademark assignment agreement.

Jump to section.

A trademark assignment agreement is a legal document that transfers ownership of a trademark from one party to another. In California, this agreement is governed by California law, which sets out the requirements for a valid and enforceable assignment. The agreement typically includes details about the trademark, the parties involved, and the terms and conditions of the transfer.

A properly executed trademark assignment agreement can help ensure that the new owner has full legal rights to use, sell, or license the trademark while protecting the interests of the original owner. This type of agreement is commonly used in business transactions such as mergers and acquisitions, where trademarks are often valuable assets.

Essential Elements of a Trademark Assignment Agreement

A trademark assignment agreement in California must meet certain requirements to be legally binding and enforceable. Here are some of the essentials of a trademark assignment agreement in California:

The agreement must identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement must clearly state that the current owner (assignor) is transferring ownership of the trademark to the new owner (assignee). It should also state that the assignor has the legal right to transfer trademark ownership.

The agreement should specify the consideration that the assignee provides in exchange for transferring the trademark. It can be a monetary payment or other valuable consideration.

The agreement should contain representations and warranties by both the assignor and assignee, such as the assignor's ownership of the trademark and the assignee's ability to use and exploit the trademark.

The agreement should include a provision for the assignment of goodwill associated with the trademark, which refers to the intangible value of the trademark's reputation and customer loyalty.

The agreement may also include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others.

The agreement must be signed by both the assignor and assignee and should include the date of execution.

Overall, a trademark assignment agreement in California should be clear, concise, and comprehensive and accurately reflect both parties' intentions.

Importance of a Trademark Assignment Agreement

A trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. Here are some reasons why a trademark assignment agreement is important:

A trademark assignment agreement establishes the legal transfer of ownership of the trademark from the assignor to the assignee. This helps to ensure that the new owner has full legal rights to use, sell, or license the trademark.

A trademark is a valuable asset representing a business's goodwill and reputation. A properly executed trademark assignment agreement helps to protect the assignee's investment by ensuring that they have the legal right to use and exploit the trademark.

A trademark assignment agreement can help avoid confusion and disputes over trademark ownership. It provides a clear record of the transfer of ownership and can be used as evidence in case of any legal disputes.

A trademark assignment agreement can enable the assignee to license the trademark to others. It can be a valuable source of income for the assignee and help increase the trademark's value.

A trademark assignment agreement is often used in business transactions such as mergers and acquisitions, where trademarks are a valuable asset. It helps to ensure that the transfer of ownership is legally valid and provides a clear transaction record.

Overall, a trademark assignment agreement is an important legal document that helps to protect the interests of both the assignor and assignee. It provides a clear record of the ownership transfer and can help avoid confusion and disputes over ownership of the trademark. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Benjamin W.

Common Mistakes to Avoid in Trademark Assignment Agreement

When drafting or executing a trademark assignment agreement in California, several common mistakes should be avoided to ensure the agreement is legally valid and enforceable.

The agreement should identify the transferred trademark, including any registration or application numbers, and describe the goods or services associated with the trademark.

The agreement should include all parties involved in transferring the trademark, including any successors or assigns. Failing to include all parties can result in a lack of clarity over who owns the trademark.

The agreement should specify the assignee's consideration in exchange for the trademark transfer. If the consideration is not accurately described, the agreement may be challenged as unenforceable.

The agreement should include provisions for the assignment of ancillary rights, such as the right to sue for infringement, the right to use the trademark in advertising, and the right to license the trademark to others. Failing to address these rights can result in a lack of clarity over the assignee's legal rights to use and exploit the trademark.

The agreement must be signed by both the assignor and assignee and should include the date of execution. Failing to obtain proper signatures can result in a lack of clarity over whether the transfer of ownership is legally valid.

Trademark law can be complex and nuanced. It is important to consult with a qualified attorney to ensure that the agreement meets all legal requirements and adequately protects the parties' interests.

Overall, it is important to carefully draft and execute a trademark assignment agreement in California to ensure it is legally valid and enforceable. Avoiding these common mistakes can help to ensure that the agreement accurately reflects the intentions of both parties and protects their legal rights.

Key Terms for a Trademark Assignment Agreement

• Trademark: It is a recognizable sign, design, or expression that identifies and distinguishes the source of a product or service from those of others.
• Assignor: The assignor is the party currently owning the trademark and transferring ownership to another party through the trademark assignment agreement.
• Assignee: The assignee is the party acquiring ownership of the trademark through the trademark assignment agreement.
• Goodwill: Goodwill is the intangible value associated with a trademark built up through the use and reputation of the mark in the marketplace.
• Consideration: It refers to the compensation or value exchanged between the assignor and assignee as part of the trademark assignment agreement. This can include monetary payment, goods or services, or other forms of value.

Final Thoughts on a Trademark Assignment Agreement

In conclusion, a trademark assignment agreement is an important legal document that transfers ownership of a trademark from one party to another in California. The agreement is essential to protect the legal rights and investments of both the assignor and assignee and avoid confusion and disputes over trademark ownership.

When drafting or executing a trademark assignment agreement in California, it is important to avoid common mistakes, such as failing to identify the trademark, incorrectly describing the consideration, and not obtaining proper signatures.

Consulting with a qualified attorney can help ensure the agreement meets all legal requirements and adequately protects the parties' interests. Overall, a properly executed trademark assignment agreement can provide a clear record of the transfer of ownership and enable the assignee to use, sell, or license the trademark with confidence.

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Meet some of our Trademark Assignment Agreement Lawyers

Skilled in the details of complex corporate transactions, I have 15 years experience working with entrepreneurs and businesses to plan and grow for the future. Clients trust me because of the practical guided advice I provide. No deal is too small or complex for me to handle.

Diana is a registered patent attorney and licensed to practice law in Florida and in federal courts in Florida and in Texas. For nearly a decade, Diana has been known as the go-to brand builder, business protector, and rights negotiator. Diana works with individual inventors, startups, and small to medium-sized closely held business entities to build, protect, and leverage a robust intellectual property portfolio comprising patents, trademarks, copyrights, trade dress, and trade secrets.

Scott Bowen, Esq brings legal experience in family law, special education law, and healthcare law matters. Scott also has over 20 years of expertise in healthcare compliance, medical coding, and healthcare consulting to the firm.

Damian is a founding partner of Holon Law Partners. He began his career as an officer in the Marine Corps, managing legal affairs for his command in Okinawa, Japan. In this role, he conducted investigations, assembled juries for courts martial, and advised his commander on criminal justice matters. Damian was twice selected to serve as his unit’s liaison to the Japanese government and self-defense forces. Damian later worked as a transactional attorney in New York, where he handled commercial real estate, finance, and restructuring matters. He has also participated in insider trading investigations at the SEC, worked on compliance at a private equity firm, and managed legal operations and special projects at a vertically integrated cannabis company in New Mexico. Damian draws on these diverse experiences to provide his clients with creative solutions to thorny legal issues – from negotiating commercial leases to managing complex securities offerings. In addition to practicing law, Damian volunteers as a research assistant at the University of New Mexico Medical School’s McCormick Lab – studying the microbiology of longevity and aging. When not working, he enjoys spending time with his two pit bulls and pursuing his passions for foreign languages, art, philosophy, and fitness. Damian resides in Albuquerque, New Mexico.

Jonathan F.

Trial and transactional attorney with over 30 years experience with complex business transactions and disputes.

My passion is protecting the passions of others. I have 5+ years of contract review, and all aspects of entertainment law including negotiation, mediation, intellectual property, copyright, and music licensing. I also have experience working with nonprofits, and small businesses helping with formation, dissolution, partnerships, etc. I am licensed in both Texas and California.

Nuo Jia (Lois) L.

Attorney Lois Li is a bilingual business and commercial attorney licensed in Michigan, U.S. since 2014, in Ontario, Canada since 2015, and in New York, U.S. since 2020. As an attorney licensed in two countries, Lois leads Alpine Law’s US/China/Canada practice. She is experienced in legal and contractual transactions in both English and Chinese. Lois has over six years of experience in assisting clients with business operations and legal services, and is specialized in advising companies with legal needs in International Business, Securities law, Cryptocurrency – Block chain, and Fin-Tech. Having served as both an outside and an in-house counsel, Lois worked with many startup and small businesses. With a strong understanding of core business and the ability to translate business needs into legal requirements, Lois has assisted many companies to establish policies and procedures, and drafted and negotiated employment and transaction contracts. Further licensed as a Registered Nurse since 2010, Lois specializes in healthcare law and is experienced in FDA, HIPAA, Medicare and Medicaid regulations. She has assisted many businesses in the medical and healthcare industry.

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Assignments and transmissions

Practice guidelines

In this practice guideline.

This document provides guidelines on the assignment or transmission of a trade mark application or a trade mark registration under the Trade Marks Act 2002. These guidelines do not constrain the judgement and discretion of the Commissioner of Trade Marks, and each application will be considered on its own merits.

1. Introduction

Assignment or transmission of a trade mark is the process by which ownership of a registered trade mark or a trade mark application may be passed from one party to another. Sections 81 and 82 of the Trade Marks Act 2002 (“the Act”) allow for the assignment or transmission of a trade mark application or registration.

Part 16 of the Trade Marks Regulations 2003 (“the Regulations”) prescribe the requirements for a Commissioner’s Certificate and for assigning or transmitting a trade mark application or registration and incorporate regulations 143 to 146 of the Regulations.

IPONZ must be advised of a change of ownership as soon as it occurs. This is to ensure that assignments and transmissions of title that have been effected in the marketplace are entered in the register at the earliest opportunity, so that the register is an accurate reflection of the real business situation.

Change of name

Please note, if the change in owner relates solely to a change of name for the applicant requests of this nature must be made as a change of name, located under ‘maintain client’.

The Office will decline any assignment request that relates to the owner of the mark changing its name.

2. The application process

An application for a Commissioners Certificate or for an assignment or transmission of a trade mark must be submitted through the online case management facility.

Examples of acceptable documentation to support the claim can be found in our information about changing ownership . The onus is on the applicant to ensure the documentation is true and correct. 1

2.1 Filing method

An application must be submitted through our online case management facility .

IPONZ online services provide secure and immediate acknowledgement of your filing.

2.2 Prescribed fees

There is no fee for an assignment or transmission of a trade mark application or registration.

3. Assignments and transmissions

A trade mark application or registration may be assigned or transmitted in respect of all or some of the goods and services for which it is either registered or for which registration is sought. 2

An assignment or transmission may be full or partial, that is, in respect of all or only some of the goods and/or services in respect of which the trade mark is registered or registration of the trade mark is sought.

If a transmission or assignment includes all goods and services for which a trade mark is registered or for which registration is sought, then the assignment or transmission is “full”. These requests are filed as a “change ownership” request, located under the “maintain a trade mark” option in the online services. Read about how to request for change ownership .

If a transmission or assignment includes only some of goods and services for which a trade mark is registered or for which registration is sought, then the assignment or transmission is “partial”. These requests are filed as a “Division/Partial Change of Ownership” request, located under the “maintain a trade mark” option in the online services.

The Commissioner has no discretion in respect of the recordal of an assignment or transmission. If the application complies with the formal requirements and is supported by a document that establishes title to the trade mark, the Commissioner must record the change of ownership.

3.1 Assignment of a trade mark application

A person to whom a trade mark is assigned or transmitted must apply to the Commissioner to register their title to the application if assignment or transmission is before the actual date of registration.

An application for the assignment or transmission of a trade mark application must be submitted through the online case management facility and contain the following information: 3

• The name of the assignor of the trade mark;
• If the assignor has an agent, the agent’s name;
• The name, address for service in New Zealand or Australia, and business or residential address of the assignee;
• If the assignee has an agent, the agent’s name ;
• The application number of the trade mark;
• A description or representation of the trade mark;
• Whether the assignment or transmission was full or partial;
• The date on which the assignment or transmission became effective;
• The class or classes that were assigned or transmitted;
• In the case of the assignment or transmission of only some of the goods or services within a classification, a statement of the goods or services assigned or transmitted;
• A copy of the document of assignment or transmission or other documents acceptable to the Commissioner that are proof of the assignee’s title to the trade mark; for example a Deed of Assignment [PDF, 117 KB] , Sales and Purchase Agreement, or other documentation supporting the transfer in title.

The Commissioner will, on proof of the person’s title:

• accept the change of the applicant on the trade mark application;
• on completing the assignment, confirm with the applicant that the assignment or transmission has been completed.

3.2 Assignment of a trade mark registration

An application for the assignment or transmission of a trade mark registration must be submitted through the online case management facility and contain the following information: 4

• The registration number of the trade mark;
• register the assignee as the owner of the trade mark registration in relation to the goods or services in respect of which the assignment or transmission has effect; and
• on completing the assignment, confirm with the applicant that the assignment or transmission has been completed

3.3 Proof of title

An assignment of a registered trade mark requires proof of title to the satisfaction of the Commissioner.

A copy of the document of assignment or transmission is acceptable as proof of the assignee’s title to the trade mark and does not need to be certified. The Office does not accept original copies and is not able to guarantee their return to their correct owners.

The proof of title document should show the full name and address of both parties, the trade mark being transferred and should be signed and dated at least by the current owner.

Where a partial assignment or partial transmission is sought, the proof of title document should also list the goods and services that are being assigned or transmitted. This must agree with the list stated in the application to record.

Please note, the Office accepts redacted versions of documents as long as the parties, intent of the agreement and the trade marks being assigned are clear.

3.3.1 Amalgamations

Amalgamations of companies are actioned as envisaged by the Companies Act 1993. Proof of ownership can be achieved by providing to the Commissioner a copy of the Certificate of Amalgamation issued by the Registrar of Companies as evidence of the amalgamation.

3.3.2 Company mergers

Where a company merger has occurred, the applicant can provide proof of ownership with a copy of the Certificate of Merger.

3.4 Authorisation of agent

An authorisation of agent is generally not required for an agent to record an assignment or transmission on behalf of the assignee (new owner). However, the commissioner retains the discretion to require an Agent Authorisation under certain circumstances.

Where the agent wishes to be recorded as the agent on record for the assigned trade mark cases it is necessary to upload either of the following:

• An authorisation of agent; or
• A letter signed by the agent confirming they have been asked to represent the assignee (new owner).

Where the agent wishes to record the assignment or transmission, but does not wish to record themselves as the agent on record for the assigned trade mark cases, it is important that they remove themselves from the agent field within the record change of ownership screen in the case management facility.

3.5 Bona Vacantia

Where 5 a company has been removed from the New Zealand Companies Register and its’ trade mark registration was not assigned (whether by deed or by operation of law) to another person immediately prior to the company’s removal, the registration is prima facie bona vacantia and vests in the Crown by virtue of section 324 of the Companies Act 1993. As the owner of the trade mark registration no longer exists as a legal entity, it is not able to assign the ownership of the trade mark registration to an interested party.

Where the ownership of the trade mark has vested in the Crown, it is possible to request the Crown to transfer ownership of the registration. The Treasury is the government agency that deals with requests for the Crown to deal with bona vacantia property. In particular, The Treasury’s Legal Group advises on such requests.

To record such an assignment, IPONZ requires:

• A completed application to record a transmission under s82(2) of the Act, to account for the transmission of the registration from the Company to the Crown and from the Crown to the interested party; and
• Supporting documentation including copies of any documents and evidence required by Treasury.

The Treasury will advise of any documents and evidence required to action a bona vacantia request on a case by case basis. However, in relation to the assignment of a trade mark to an interested party, the following documents may be required by The Treasury:

• setting out the facts about the registration;
• setting out the circumstances surrounding the removal from the register without first transferring the registration; and
• deposing to the effect that the Company held the registration in its own right and not on trust for any other body corporate or any other person
• An application by an interested party requesting the Crown to deal with the matter as bona vacantia pursuant to section 324 of the Companies Act, together with an indemnity from the appropriate person (usually the interested party) in favour of the Crown indemnifying the Crown in respect of all or any liability that may be incurred by the Crown in respect of all actions taken in transferring the ownership of the trade mark registration.
• A letter from the Companies Office certifying that the company was dissolved, the section of the Companies Act under which the company was removed from the register, the date of removal and the reference to its publication in the Gazette (if this was done). The certificate should also state that the company has not been restored to the Register.
• A photocopy of the extracts from the Trade Marks Register duly certified as being a true copy of the originals.
• Written consent from the Shareholder/s at the time the company was removed, consenting to the transfer of the ownership of the trade mark registration to the interested party.

Please note that the Crown is entitled to recover their costs and may require payment in advance. Any person wishing to pursue this option is expected to deal directly with The Treasury. For more information, email [email protected] .

Last updated 30 November 2017

• 1 See section 185 of the Trade Marks Act 2002.
• 2 See section 82(1) of the Trade Marks Act 2002.
• 3 See regulation 146 of the Trade Marks Regulations 2003.
• 4 See regulation 146 of the Trade Marks Regulations 2003.
• 5 Practice Guideline Amendment 2007/03, Intellectual Property Office Newsletter, 1 August 2007.

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Trademarks in Russia

Alexander Nesterov

Partner, Trademark Attorney

Sergey Medvedev

Partner, Trademark & Design Attorney, Ph.D., LL.M. Head of Legal Department

Legal framework

Domestic law.

What is the primary legislation governing trademarks in your jurisdiction?

The Russian Civil Code, and in particular Part IV, is the primary legislation for trademarks, among various types of intellectual property. The code governs the prosecution, exploitation, licensing and enforcement of trademark rights. Other local administrative regulations, federal laws and procedural codes support the trademark protection and enforcement regime.

International law

Which international trademark agreements has your jurisdiction signed?

Russia has signed the following international trademark agreements, which are in force:

• the Paris Convention for the Protection of Industrial Property (Paris Convention) (1883);
• the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) (1891);
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (1989);
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957);
• the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs) (1994);
• the Trademark Law Treaty (1998); and
• the Singapore Treaty on the Law of Trademarks (2009).

Which government bodies regulate trademark law?

Trademark prosecution goes through the Federal Service for Intellectual Property (RUPTO). RUPTO is under the jurisdiction of the Russian Ministry of Economic Development.

The following bodies are in charge of trademark enforcement:

• anti-monopoly bodies, including the Russian Federal Anti-monopoly Service;
• the customs and police authorities;
• the prosecutors’ offices; and
• the courts, including the courts of general jurisdiction and the commercial courts.

Rights and protection

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Russia is a first-to-file country. Legal entities or individual entrepreneurs who first apply for registration of a trademark enjoy the priority right to obtain trademark registration. Therefore, it is essential to file trademark applications in Russia without delay.

It is not necessary to use the mark before applying for registration, and proof of use is not required when the trademark application is filed.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Trademark rights stem from registration in Russia. Unregistered marks or marks-in-use are not protected, unless they have obtained an official 'well-known' status under a special procedure through RUPTO.

In certain instances, unregistered marks (eg, trade dresses, logos, three-dimensional marks) can enjoy unfair competition and/or copyright protection. Trade names (known as ‘commercial designations’) can also be protected and enforced in Russia.

How are rights in unregistered marks established?

No exclusive rights are given to unregistered mark users. Rights available against unfair competition or copyright infringement are usually established through prior, long-standing use, consumers’ association and reputation. Trade names must be distinctive and known amongst customers within a certain territory of use. 

Are any special rights and protections afforded to owners of well-known and famous marks?

There is a special procedure for the recognition of trademarks as well known. Unlike in many other countries, in Russia a trademark is not granted well-known status as a result of court proceedings and litigation. In order for the mark to be considered a well-known trademark, a request must be filed with RUPTO.

A well-known trademark will generally be granted the same legal protection as an ordinary trademark. Nevertheless, a well-known trademark also provides its owner with the following important advantages:

• the legal protection of the mark is not time-limited;
• protection extends to goods or services other than those for which the mark is recognised as well known if the third party use is likely to be associated by consumers with the owner of the well-known trademark, and may affect the owner’s legitimate interests;
• protection of a well-known mark may start from the period that predates the filing of the request for recognition of the mark as well known; and
• the commercial value of a well-known trademark is higher than that of an ordinary trademark.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign national trademark registrations are not recognised in Russia. However, as a signatory to the Madrid Agreement and the Madrid Protocol, Russia grants protection to trademarks registered under the Madrid system.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

As Russia is a first-to-file jurisdiction, trademark registration is of the utmost importance for its owner. Generally, trademark registration provides the registrant (trademark owner) with the legal capacity of trademark use, disposal (eg, licensing) and enforcement. Trademark registration can afford other benefits, such as customs recordal. Trademark registration may prevent a similar/identical mark from being registered in the name of a third party.

Who may register trademarks?

Legal entities or individual entrepreneurs may register trademarks.

What marks are registrable (including any non-traditional marks)?

Any designations, including – but not limited to – verbal, pictorial, combined, three-dimensional ones, and other marks or their combinations, may be registered as trademarks. A trademark may be registered in any colour or colour combination, or just in black and white.

In addition, colour marks (either as individual colours or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion/animation marks, taste marks and other non-traditional marks may be registered in Russia, but their registrability depends on their distinctiveness, which may be:

• inherent, deriving from the distinctive features of the mark; or
• acquired, through intensive use in Russia.

Can a mark acquire distinctiveness through use?

Registration of a mark that is lacking distinctiveness is not permitted. However, it is possible to obtain trademark registration based on the acquired distinctiveness of the mark through its intensive (pre-filing) use in Russia. 

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

Examination of trademark applications consists of a formal examination and, thereafter, a substantive examination based on absolute and relative grounds allowing to determine whether the mark filed is inherently registrable, and whether it is confusingly similar to third parties’ pending applications and/or registrations.

Are collective and certification marks registrable? If so, under what conditions?

Collective marks

The law provides for registration of collective marks. A ‘collective mark’ is defined as a mark of a union, business association or other voluntary association of enterprises capable of distinguishing goods manufactured or commercialised by the union/association having common characteristics as to quality or otherwise.

When filing an application for registration of a collective mark, it is imperative to submit by-laws of the collective mark containing the rules for the use of the collective mark. These rules must indicate the name of the association entitled to register the mark in its name, the list of enterprises entitled to use the mark, the purpose of registration of the mark, the list of goods and description of their common characteristics (relating to quality or otherwise), the conditions of use of the mark and the sanctions for violation of such rules.

The names of the enterprises entitled to use the mark and an extract from the rules relating to the common characteristics of the goods for which the mark is registered will be mentioned in the publication of registration of the collective mark in the RUPTO’s Official Bulletin .

The registration holder must inform the RUPTO of any amendment to the rules of use of the mark. Any interested person may apply to the Russian IP Court for the total or partial cancellation of the registration of a collective mark if the mark is used in relation to goods not having common qualitative or other common characteristics.

Collective marks cannot be assigned or licensed to third parties.

Collective marks and applications for the registration of a collective mark may be converted respectively into trademarks or trademark applications.

Certification marks

Certification marks may also be registered. However, the registration procedure for this type of marks is quite different from that used for trademarks.

In particular, a legal entity that created its own voluntary system of certification is entitled to get registered both the system and the certification mark identifying this system. The registration can be implemented by way of filing an application with the Russian Federal Service for State Standardisation.

Under the existing rules, a certification mark must be distinctive and visually perceivable. Trademarks may not be used as certification marks. However, a certification mark can be registered as a trademark if it meets the general registrability requirements and is not in conflict with third parties’ rights.

Registered certification marks are entered into a special state register, which exists separately from the RUPTO Register of Trademarks.

Filing and registration

Filing procedure.

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Foreign applicants must be represented by a Russian trademark attorney registered with the RUPTO. Therefore, in order for an application to be filed in the name of an entity residing outside Russia, such entity must appoint a Russian trademark agent to represent the company in all trademark prosecution proceedings.

The power of attorney can be submitted independently from the trademark application, but filing it later may delay the examination. That said, there are neither strict deadlines for filing the power of attorney with the RUPTO, nor a late filing fee.

A power of attorney should be issued by the applicant and signed by the duly authorised person with an indication of that person’s name and position (title). The date and place of signature should be indicated as well.

Neither notarisation nor legalisation of the power of attorneys is required.

What information and documentation must be submitted in a trademark registration application?

The following information and documentation shall be included in the trademark application:

• the applicant’s name and address;
• a list of goods and/or services (in accordance with the Nice Classification) for which a trademark is to be registered. A class heading does not automatically protect all the goods/services included in the corresponding class;
• one electronic print-out of the trademark of good quality;
• the power of attorney (although as noted above, the power of attorney can be submitted after the trademark application); and
• a certified copy of the first (home) application (in case of a priority claim under the Paris Convention).

What rules govern the representation of the mark in the application?

The representation of the mark in the application is governed by Decree 482/2015 of the Ministry of Economic Development.

Are multi-class applications allowed?

Multi-class trademark applications are allowed.

Is electronic filing available?

Electronic filing is available. In case of non-electronic filing, the official fees increase by 30%.

What are the application fees?

Formal examination (in one class) is RUB2,450 and RUB700 for each additional class over five.

Substantive examination (in one class) is RUB8,050 and RUB1,750 for each additional class over one.

How are priority rights claimed?

A priority claim made under the Paris Convention must be accompanied by a certified copy of the first (home) application. The filing particulars should correspond to those stated in the home application. The home application can be submitted after filing an application under the Paris Convention with the RUPTO, but no later than three months after filing with the RUPTO. This term cannot be extended. Split-priority is not possible in Russia.

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Word, graphic and combined trademark searches are available through the RUPTO. The searches are not required before filing, but are strongly recommended in order to determine the availability and registrability of designations.

The official fee for a standard one-week word search is RUB14,160 for one class and RUB3,540 for each additional class.  

Examination

What factors does the authority consider in its examination of the application?

The application process involves a formal examination followed by a substantive examination.

The formal examination is conducted within a month of filing. The examiner checks both the presence in the application of the requested documents and their compliance with the established requirements. If all formal requirements are met, then the substantive examination will start. Otherwise, the application will be rejected.

Does the authority check for relative grounds for refusal (eg, through searches)?

A trademark application may be rejected either based on absolute or relative grounds, or both on absolute and relative grounds.

The relative grounds for refusal include:

• identity or similarity to the extent of confusion with prior trademarks (both registrations or applications) owned by third parties in relation to similar goods or services;
• identity or similarity to the extent of confusion with well-known marks; and
• identity or similarity to the extent of confusion with third parties’ industrial designs, appellations of origin, company names or commercial designations.

A trademark may also be refused protection if it incorporates, as elements of the trademark, protected distinguishing features of other parties (and confusingly similar signs), as well as copyrighted works owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons and industrial designs owned by third parties.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

Following the substantive examination, the applicant is notified of any shortcomings, along with an invitation to submit arguments and proofs to remedy the issues identified. The examiner will take the applicant’s arguments into account when a decision is taken if these arguments are submitted within six months of the issuance of the said notification.

Can rejected applications be appealed? If so, what procedures apply?

An applicant may appeal any decision by the RUPTO with the Chamber of Patent Disputes of the RUPTO within four months of the decision issuance. The chamber’s decision may be further appealed to the Russian IP Court within three months.

Registration

When does a trademark registration formally come into effect?

A trademark registration becomes effective within one month of payment of the registration fee. 

What is the term of protection and how can a registration be renewed?

Trademark registrations are valid for 10 years from the date of filing of the application. Registrations can be renewed an unlimited number of times and each time for a 10-year period.

What registration fees apply?

The official fee for registration is RUB11,200 and RUB700 for each additional class over five; the official fee for issuance of the trademark certificate is RUB1,400.

What is the usual timeframe from filing to registration?

The timeframe from filing to registration is typically eight to 10 months.

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

There is no opposition system in Russia with respect to pending applications. However, the law provides for the following procedure:

• the RUPTO should publish information on all trademark applications;
• Third parties have the right to review all trademark documents on file and not only those included in the original trademark applications’ filings; and
• Third parties have the right to submit to the RUPTO their observations against pending trademark applications before any official action is taken.

As examiners may take into account these observations during their examinations of any applications, these letters may be effective ways to ensure that prior rights are taken into consideration.  

What is the usual timeframe for opposition proceedings?

An invalidation action against a trademark based on prior rights can be brought. Specifically, within five years of publication of the information on trademark registration in the RUPTO’s Official Bulletin , the owner of prior trademark rights has an opportunity to file an invalidation action against the trademark registration with the Chamber of Patent Disputes of the RUPTO. In case of such an invalidation action, the trademark owner is notified accordingly and both parties are invited to attend hearings to consider the matter. Following the hearings, the Chamber of Patent Disputes of the RUPTO makes a decision – either:

• rejecting the invalidation action and leaving the trademark in force; or
• invalidating the mark in full or partially.

This procedure can take three to four months.

Are opposition decisions subject to appeal? If so, what procedures apply?

An invalidation decision from the Chamber of Patent Disputes of the RUPTO may be appealed within three months to the Russian IP Court.

Removal from register

Non-use cancellation.

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Any interested party may request the cancellation of a mark for non-use. A non-use action can be brought to the Russian IP Court, provided that the mark has not been used for three consecutive years preceding the established pre-trial procedure as outlined below.

Prior to filing a non-use claim, a party that is having a legitimate interest must send a letter to the trademark owner asking the latter either to surrender its trademark rights through the RUPTO or to assign the mark at issue to the claimant. The trademark owner has two statutory months to perform one of the options. If it fails to do so, the claimant has 30 days (following the expiration of the two-month period) to file the trademark non-use lawsuit with the Russian IP Court.

During the trial, the claimant must demonstrate a legitimate interest over the cancellation, while the trademark owner (respondent) must show use of the litigious mark by disclosing relevant documentary evidence. If the claimant succeeds, the trademark registration will be cancelled from the effective date of the decision made by the Russian IP Court.

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark registration may be invalidated by a decision of the Chamber of Patent Disputes of the RUPTO based on either absolute grounds (eg, misleading, lack of distinctiveness) or relative grounds (eg, prior rights). 

Who may file a request for revocation and what is the statute of limitations for filing a request?

An invalidation request may be filed by any interested party with the Chamber of Patent Disputes of the RUPTO. A request based on absolute grounds may be filed during the whole period of validity of the mark, and a request based on prior rights (ie, relative grounds) may be filed during five years following the publication date.

What are the evidentiary and procedural requirements for revocation proceedings?

 The evidentiary requirements depend on the grounds for invalidation. 

What is the appeal procedure for cancellations or revocations?

A decision of the Chamber of Patent Disputes of the RUPTO may be appealed to the Russian IP Court. The statutory term for appeal is three months.

In order to appeal, it is necessary to file a well-grounded civil lawsuit by submitting relevant arguments contesting the decision of the Chamber of Patent Disputes of the RUPTO. The Russian IP Court usually rejects new pieces of evidence that have not been submitted to the Chamber of Patent Disputes of the RUPTO, and limits its consideration to the documents/materials in the case file.

Unless further appealed, the duration of the trial with the Russian IP Court is typically three to five months.

What is the procedure for surrendering a trademark registration?

A voluntary trademark cancellation is possible; the mark owner must file the appropriate request directly with the RUPTO.

Enforcement

Jurisdiction.

Which courts are empowered to hear trademark disputes?

Trademark infringement disputes are generally heard by commercial courts of first instance located in the constituent parts of the Russian Federation. Their decisions may be appealed to the competent appellate courts. Further appeals (cassations) go to the Russian IP Court and the Economic Board of the Russian Supreme Court. A final, supervision appeal, if accepted, may be considered by the Russian Supreme Court, which is entitled to review and ascertain whether there is substantial breach in law enforcement.

Where a defendant is neither a business entity nor an individual entrepreneur, a court of general jurisdiction shall be chosen as the forum.

Trademark non-use disputes fall under the exclusive jurisdiction of the Russian IP Court, which hears such disputes on the merits in the first instance, while the Presidium of the Russian IP Court hears cassation appeals as the second instance court. Supervision appeals on such category of disputes may also be filed to the Economic Board of the Russian Supreme Court.

Trademark-related disputes may be a matter of unfair competition, which is prohibited in Russia. For example, the unfair acquisition and use of trademark rights is not permitted, and such issue may be considered by the Russian Federal Anti-monopoly Service, its territorial divisions,  and/or competent court.

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The Russian trademark enforcement system is quite effective and well developed. Infringement of trademark rights may primarily be prosecuted through civil, administrative and criminal proceedings. A special quasi-judicial procedure based on unfair competition is also available. Lastly, cease-and-desist or demand letters have become a popular and obligatory pre-judicial remedy for companies wishing to sue infringers in court and claim damages or monetary compensation.

Civil proceedings

In the framework of civil proceedings, a trademark owner (or its registered/exclusive licensee) is normally entitled to seek the following legal remedies:

• injunctive relief (preliminary and permanent injunctions);
• monetary relief (damages or monetary compensation);
• seizure and destruction of counterfeit goods and related equipment/materials; and
• publication of the court order.

Civil proceedings begin with a statement of claims (lawsuit), which is to be filed with the competent court. Usually, the residence/location of the defendant will establish the jurisdiction.

Russia does not support a discovery system; therefore, all evidence must be collected and secured in advance of the lawsuit. If it is not possible to obtain certain evidence from the infringer before the action, or the latter refused to disclose the evidence, the plaintiff may discover the evidence through the agency of the court during litigation.

Each party to a civil action is obliged to prove the asserted facts:

• the plaintiff needs to prove that it is the registered trademark owner or registered exclusive licensee, and the defendant unlawfully uses the litigious trademark; and
• the defendant needs to prove that there are legitimate grounds for trademark use that exempt it from liability.

The duration of civil proceedings will vary depending on the specificity of the case at issue. Typically, the decision of the first-instance court may be obtained within six to nine months, unless the infringer appeals the decision.   

Civil actions are widely used as the most efficient and viable enforcement option to tackle parallel imports and grey market goods, including trademarked products offered on the Internet, as well as contractual post-termination trademark issues. 

Administrative proceedings

In accordance with the applicable (administrative) law, the unlawful use of a trademark shall entail an administrative fine, as well as confiscation of counterfeit goods (and related equipment/materials) for the purpose of destruction.

Administrative proceedings usually begin with a complaint, which the trademark owner must file with the police or customs authorities, so that they can take action against the infringer. Accordingly, the Police or Customs will be the plaintiff, while the infringer will be the defendant in such type of action. In the course of administrative proceedings, the trademark owner may be engaged as an injured (third) party.  

An administrative action may take three to five months, unless the infringer appeals the decision.

Practically, an administrative procedure proves to be the most efficient and viable enforcement option to stop the importation of counterfeit goods into Russia. This measure is also applied when small stores offer for sale fake products on the internal market.

Criminal proceedings

The illegal use of a trademark may also lead to criminal prosecution.

In accordance with the applicable (criminal) law, the unlawful use of a trademark shall entail criminal liability only in the event that the infringer’s illegal activities cause substantial damages, or if trademark infringement is repeated.

The typical statutory criminal sanctions are a criminal fine, forced labour, corrective measures and imprisonment. In the course of a criminal procedure, the trademark owner is also entitled to file a civil lawsuit to recover damages.

Criminal proceedings vary tremendously in length, but often last one to two years to reach a first-instance decision.

In practice, the criminal procedure is used against large-scale counterfeit operations or gross infringers that manufacture and distribute counterfeit goods in large quantities all over the country.

Unfair competition actions

Trademark infringement may constitute an act of unfair competition. Passing off, as well as imitation of trade dress, are also treated as unfair behaviour, which may be prosecuted.

The Russian Federal Anti-monopoly Service, as well as its territorial divisions, are empowered to consider disputes related to unfair competition through a special quasi-judicial procedure.

This type of procedure starts on the basis of a complaint from the injured party (ie, trademark owner or its local distributor). Should the action on unfair competition be eventually successful, the respondent (infringer) would be forced to cease the illegal activities and pay an administrative fine of up to 0.15% of the infringer’s profits.

This procedure usually takes five to 10 months, although it can be longer if the binding order or decision of the Russian Federal Anti-monopoly Service/its territorial division is appealed in court.

Cease-and-desist letters

Sending a cease-and-desist or demand letter has become a pre-requisite to a court action in certain instances. In particular, a trademark owner will not be able to claim damages or monetary compensation in a civil action if it has not first sent a cease-and-desist letter to the infringer.

The infringer has 30 days to respond to the cease-and-desist letter. The infringer’s failure to respond or refusal to comply with the terms of the letter provides the trademark owner with a legal standing to sue and claim monetary relief in court. 

Sending a demand letter to the alleged infringer claiming a voluntary cessation of trademark infringement may be the easiest and the most effective out-of-court enforcement option in many situations. 

Who can file a trademark infringement action?

Generally, the valid registrant (ie, trademark owner), its registered assignee or registered exclusive licensee is entitled to file trademark infringement actions, provided that their rights and legitimate interests are affected by the unlawful/unauthorised trademark use. Non-exclusive licensees, distributors or other authorised trademark users do not have the same privilege.

What is the statute of limitations for filing infringement actions?

The general statutory period of limitations for filing a trademark infringement action is three years from the date when the claimant became or should have become aware of the infringement. The same period applies to the procedure for the execution of the effective court decision concerning the trademark infringement matter.

What is the usual timeframe for infringement actions?

Please see the section on actions above.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Preliminary and permanent injunctive reliefs are generally available and may be granted in trademark infringement disputes.

Preliminary injunctive relief will be awarded where the claimant can demonstrate that failure to stop the infringement will lead to substantial damages and/or make any subsequent court order unenforceable. 

In a trademark infringement matter involving unauthorised domain name registration and use, a special pre-trial procedure exists for obtaining temporary restraining order through a domain registrar. This pre-trial security measure is aimed at ‘locking’ the conflicting domain name; the pre-trial measure is  valid for 14 days to enable trademark owner to file complaint with the competent court, provided that the mark owner gives a warranty for indemnification in the complaint.

Permanent injunctive relief will be granted where a claimant can prove the trademark infringement. A plaintiff must typically provide evidence of the following four elements:

• the defendant used the mark without authorisation of the trademark owner;
• the mark used by the defendant is identical or confusingly similar to the owner’s mark;
• the disputed mark is used in connection with goods or services similar to those for which the owner’s mark is registered; and
• this creates a likelihood of confusion.

Where the plaintiff fails to prove one of these elements, the court will not make a finding of trademark infringement and, accordingly, will not grant the injunctive relief.

Evidence that may be submitted to prove trademark infringement include:

• bills of ladings, contracts and other sale and purchase confirmation documents;
• samples of counterfeit or grey market goods;
• expert opinions and public survey results;
• private detective reports and notary public protocols; and
• audio and video records.

Evidence needs to meet the requirements of relevance and be admitted for consideration.

Essentially, when claiming trademark infringement, the plaintiff must act in good faith. Abuse of rights shall lead to the dismissal of the case.

What remedies are available to owners of infringed marks? Are punitive damages allowed?

In addition to preliminary and permanent injunctive reliefs, the owners of the infringed mark can claim the following monetary relief:

• damages, including actual damages or lost profits; or
• a fixed amount ranging between RUB10, 000 and RUB5 million;
• double the price of the counterfeit goods; or
• double the cost of the trademark licence.

The trademark owner can also seek and obtain:

• the removal of the trademarks from documents, advertisements and signboards;
• the seizure and destruction of the counterfeit goods; and
• the publication of the court order.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The Russian customs authorities are required to suspend the release of products discovered in the course of customs operations that they suspect infringe trademark rights registered in the Russian Customs IP Register. 

Where products are suspended, the customs authorities must immediately give notice of the interception to the trademark owner by sending the latter an official notice of suspension along with a presentation of the facts and pictures of the seized products. Upon receipt of the said notice, the trademark owner may inspect the products and decide whether to initiate (in case of trademark infringement) or not (in case the shipment is authorised) a legal action against the infringer (importer) within the statutory period. 

The statutory period is 10 working days, which may be extended by another 10 working days if the mark owner files a motivated request reasoned by a corresponding enforcement action. Within this period (ie, 20 working days), the trademark owner may also request samples of the products seized.

In case of trademark infringement, the mark owner can enforce its rights by applying for various enforcement actions. In practice, administrative proceedings will be the most efficient enforcement option against the importation of counterfeits, while civil proceedings will be the only viable enforcement measure against parallel imports.

What defences are available to infringers?

An alleged infringer may use the following material defences:

• the mark used is not protected with regard to the goods at issue;
• the sign at issue was not used in a trademark sense;
• there is no similarity and likelihood of confusion between the conflicting marks;
• there is no similarity between the conflicting goods and the goods as to which the respective mark is registered;
• the defendant has a licence and/or the consent of the owner to use the mark;
• the plaintiff has no priority right over the conflicting designation (eg, domain name);
• the plaintiff’s trademark rights are exhausted; or
• the plaintiff is abusing its rights.

In addition, the defendant can raise the following procedural defences:

• the period of limitation applies;
• the plaintiff chose the incorrect jurisdiction or forum; or
• the plaintiff filed a lawsuit against the wrong defendant.

Further, the defendant can initiate an invalidation action against the disputed trademark. An invalidation action is considered by the Chamber of Patent Disputes of the RUPTO and such action will not stay the infringement proceedings. In other words, the trademark infringement action and the invalidation action will be independent from each other. Otherwise, the defendant can commence an unfair competition action based on unfair acquisition and use of the disputed trademark. Last but not least, the defendant can file an action for trademark non-use with the Russian IP Court.

What is the appeal procedure for infringement decisions?

The appeal venues described below are generally available in trademark infringement matters:

• appellate courts review existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
• the Russian IP Court, acting as the first cassation appeal court, hears cases on the existing case records, but does not re-evaluate the evidence or facts;
• the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
• the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.
• the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Moscow City Court) review the existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
• the presidium of the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Presidium of the Moscow City Court), acting as the first cassation appeal court, hear cases on the existing case records and do not re-evaluate the evidence/facts;

Assignment and licensing

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

A trademark can be assigned in whole or in part, with or without goodwill, and with certain jurisdictional restrictions (for international trademark registrations). Trademark applications can also be assigned during the examination process.

Trademark assignments are deemed to be entire transfers or sales of the exclusive (trademark) rights. Therefore, trademark assignment agreements cannot contain any restrictions or limitations on further trademark exploitation.

An assignment in relation to trademarks may not be possible where:

• the assignor wants to retain other confusingly similar trademark registrations, designs and/or company names; or
• the assignor wants to keep in its name the trademark registration in connection with certain goods or services similar to the assigned ones.

There may be other grounds for misrepresentation or risks of confusion in the context of trademark assignments.

An assignment of trademark rights must be made in writing and signed by both parties. The notarisation and legalisation of the deed of assignment or trademark assignment agreement is not required. However, it is mandatory to register the assignment of a trademark, whether it is registered nationally or internationally.

Failure to register the trademark assignment will result in the assignment being invalid against third parties.

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademarks can be licensed in whole or in part (under certain circumstances), with or without goodwill, and with jurisdictional restrictions (for international trademark registrations). Pending marks or trademark applications cannot be licensed.

Licensing of trademarks can be done on a sole, exclusive or non-exclusive basis. Trademark licences must also provide a term (the default term is five years) and specify the territory (the default territory is the whole of Russia) covered by the licence.

Trademarks can be licensed either in connection with all goods or services covered by the relevant trademark registrations, or in connection with specific goods or services covered by the trademark registrations. Goods and services that are not indicated in the trademark registrations may not be licensed.

A licence agreement must be made in writing and signed by both parties. The notarisation and legalisation of the licence agreement is not required. However, it is mandatory to register the licence of a trademark, whether it is registered nationally or internationally.

Failure to register a trademark licence will result in the licence being invalid against third parties

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

The main provisions that must be included in a trademark licence are the following:

• details of the parties (ie, company names and addresses of licensor and licensee, as well as their authorised officers/signees);
• subject matter of the licence (ie, the trademark registration number);
• details of the licensed goods or services subject to the licensed trademark registration (goods and services must match those indicated in trademark registration or certificate);
• type of licence (ie, whether it is sole, exclusive or non-exclusive);
• licensable rights (ie, the specifically permitted use of the licensed trademark);
• compensation clause, (this is especially applicable to a licence arrangement between business entities or companies);
• licensed territory (the default territory is the whole of Russia);
• licensed term (the default term is five years);
• sub-licence clause (ie, whether sub-licensing is permitted automatically or whether it is subject to the consent of the licensor); and
• ‘termination for convenience’ clause (ie, whether the licensor and licensee have the right to unilaterally terminate the licence).

Other provisions may be added depending on the contract structure and the parties’ negotiations.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

Security interests over trademarks are usually taken in the form of a pledge or a fixed charge. Trademark security interests are currently the most common pledges or charges in Russia (out of other IP subject matters).

A security agreement must be in writing and signed by both parties. The notarisation and legalisation of the security agreement is not required. However, to be able to enforce the contacted security interest, the trademark pledge or charge over trademark, whether protected under a national or international registration, must be registered.

Failure to register the trademark security interest will result in the security interest being invalid against third parties.

In practice, judicial and non-judicial foreclosures are used to enforce trademark security interests.

Related rights

Related ip rights.

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, trademarks can be protected under other IP rights, including by virtue of:

• copyright law (eg, logos);
• industrial design patent law (eg, three-dimensional marks); and
• unfair competition law (eg, trade dresses).

The existence of one form of IP protection does not exclude the other and, therefore, dual or even triple legal protection is possible.

Online issues

Trademarks online and domain names.

What regime governs the protection of trademarks online and domain names?

Trademark rights are afforded protection online as well. Therefore, any unauthorised use of a trademark in a domain name or on a website constitutes trademark infringement.

Alternative dispute resolution (ADR) systems, such as the Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension System (URS), do not apply to infringement matters involving ‘.ru’ domain names. Thus, domain name cancellations or transfers are usually achieved based on trademark infringement litigation initiated in local courts.

When the competent court makes a trademark infringement finding, the involved domain registrar has to cancel the disputed domain name registration; the trademark owner has priority (‘preemptive right’) to register the domain name in its own name within the statutory period.

Even though the UDRP does not apply to ‘.ru’ domain name disputes, the Russian courts support the international principle of ‘unfair competition repression’ and apply the UDRP’s three-prong test through the implementation of Article 10 bis of the Paris Convention for the Protection of Industrial Property. In other words, a trademark owner must prove the following elements in court:

• the domain name is identical or confusingly similar to a trademark in which the plaintiff has rights;
• the defendant has no rights or legitimate interests in respect of the domain name; and
• the defendant’s domain name has been registered and is being used in bad faith.

It will typically take three to five months to obtain a first-instance court decision in a trademark infringement case involving an unauthorised domain name registration and use.

Law stated date

Correct as of November 23 2017.

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FAQs - Recording Trademark Assignments in Turkey

Is there any requirement for disclosing or declaring a consideration in assignment agreements.

No, declaration or disclosure of consideration is not necessary in order to validly assign the rights.

Can an assignment be done unilaterally?

No, assignment should be done mutually and the express acceptance of the assignee is required for a valid assignment of the rights. In other words, both Assignee and Assignor should sign Assignment Agreement and their signatures should be notarized and legalized by Apostille.

Is there any requirement for legalization or notarization for recording an assignment?

Assignment Agreement should be notarized and legalized by Apostille. Specifically, notary public should expressly approve the signatures of the authorized persons of both Assignor and Assignee. If Apostille is not possible, Assignment Agreement should be legalized by Turkish consulate or embassy.

If there are more than one trademark owner, is there any requirement for co-owner consent if only one of the co-owners will assign its rights? If yes, how is it processed?

As a rule, each co-owner has the right over their trademark rights to use freely. However, in case of an assignment, the remaining co-owner(s) have pre-emption right over the trademark rights.

In case that one of the co-owners would like to assign its own rights, Assignor (assigning co-owner) or Assignee should notify the non-assigning co-owner(s) of assignment of the rights. Pre-emption right ceases within 3 months from the notification of assignment or within 2 years in any case from the assignment date of the rights. If parties cannot agree, pre-emption right can be used only by filing court action against Assignee.

Is it necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights)?

No, it is not obligatory or necessary for the remaining co-owner to be a party to and sign the Assignment (to consent &to waive any rights). TURKPATENT does not investigate the consent of the remaining co-owner(s) when assignment is requested for recordal at the trademark registry.

Is the recordal of an assignment obligatory? If not, are there any negative consequences where assignment is not recorded duly in the registry?

Recordal of an assignment is not obligatory. Assignments can only have effect against third parties, who are acting in good faith, as from the date of their entry in the trademark registry. In other words, it is not possible to put forward the rights on the trademark against third parties acting in good faith unless and until they are duly entered in the trademark Register.

Is a confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry?

Yes, confirmatory/declaratory assignment sufficient to record an assignment in the trademark registry

Is the original of Assignment Agreement required?

Not actually, a copy of Assignment Agreement is sufficient provided that it incorporates due notarization and legalized by Apostille within itself.

Is the translation of Assignment Agreement required to record an assignment in the registry?

Yes, a Turkish translation approved by a sworn translator is required for recording assignment.

Is it possible to record Assignment Agreement comprising multiple trademark cases by one request for assignment at TURKPATENT ?

Assignments should be individually handled for each case (case by case) and the number of changes in the ownership affects the costs of the recordal of assignment even if requests for recordal of assignment are simultaneously filed at the trademark Office.

Is Power of Attorney required for recording an assignment in the trademark registry?

Power of Attorney is not required for recording an assignment.

Is there any deadline to record an assignment?

There is no deadline and requirement to record assignment of the rights in the trademark registry to keep the trademark in force. The trademark remains effective independently from the assignment.

Are official fees payable in order to record a Trademark Assignment?

Yes, official fees are payable for recordal of an assignment. If there are more than one trademark within Assignment, official fees should be paid for each case separately.

Are two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recordal of the assignment?

Yes, two separate assignment documents of the same content signed and legalized in two different countries are acceptable for recording Assignment.

Is a worldwide Deed of Assignment acceptable?

Yes, it is acceptable provided that Assignment refers to Turkish trademark application or registration numbers therewithin.

Is Change of Ownership due to Assignment published?

Yes, change of ownership due to Assignment is published in Turkish Trademark Bulletin.

Can a pending trademark application be assigned?

Yes, a pending trademark application can be assigned; there is no requirement for grant or registration of application for assignment.

If a change of ownership takes place due to mergers, demergers, capital investments or transfer of businesses, how assignment of trademark should be handled and by which documents?

In such case, Assignment Agreement is not required. Instead, an official document duly approved by a governmental or judicial authority of the country, i.e. Courts, chambers of commerce or industry, finance or tax authority etc., should be submitted. There is no further requirement for notarization or legalization of these kinds of documents. Furthermore, a translation of the document approved by a sworn translator should be provided if the document is not in Turkish.

If a trademark registration or trademark application seized, is it still possible to assign the rights thereon?

Seizure is not an obstacle to assign the rights of a trademark.

If a trademark or trademark application pledged, is it still possible to assign the rights thereon?

Pledge is not an obstacle to assign the rights of a trademark.

Is there any statutory requirement for the scope or content of an Assignment Agreement?

There is no specific content requirement for Assignment Agreement. A simple declaration of transfer of rights by assignee will be sufficient. Furthermore, trademark application or registration number or numbers subject to Assignment should be listed in Assignment Agreement for validity.

Can a registered or applied-for trademark be assigned partially?

Yes, a registered or applied-for trademark can be partially assigned for some of goods or services.

In the case of a partial assignment, is there any specific requirement for Assignment Agreement?

Yes, it is obligatory to indicate class numbers and goods and services subject to the transfer in Assignment Agreement. Otherwise, recordal of assignment will not be allowed.

In the case of a partial assignment, how does TURKPATENT handle recordal of the assigned part of trademark registration or application?

TURKPATENT assign a new application and registration number, open a new registry and issue a new trademark certificate for the assigned part of the trademark. It is not required to pay registration fee for issuing trademark certificate.

In the case of a partial assignment, is it obligatory to assign same or confusingly similar goods and services?

No, it is not obligatory to assign same or confusingly similar goods and services.

If a trademark was applied for or registered in Turkey through Madrid Protocol, how the assignment is handled?

Trademarks applied for or registered under Madrid Protocol should be assigned before International Bureau of WIPO by use of MM5 Form. TURKPATENT does not accept requests for recordal of assignment regarding trademarks applied for or registered under Madrid Protocol if they are not filed by means of International Bureau of WIPO .

Do you have further questions about assignments for trademarks in Turkey? Please contact us . We will answer your questions as soon as possible.

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Columbia University in the City of New York

Miriam and ira d. wallach art gallery.

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Moscow: City, Spectacle, Capital of Photography

April 30–june 21, 2003.

Moscow: City, Spectacle, Capital of Photography , an exhibition of 20th-century photographs of Moscow, opens at Columbia University's Miriam and Ira D. Wallach Art Gallery on Wednesday, April 30, 2003 and remains on display through Saturday, June 21, 2003.

Moscow has been a powerful magnet for many Russian photographers of the 20th century. Moscow: City, Spectacle, Capital of Photography presents the work of 31 photographers, whose images have defined the visual experience of Moscow from the 1920s to the present. Diverse in form and strategy, the 90 photographs chosen for the exhibition trace the history of Russian documentary photography and offer insight into individual practices. From Aleksandr Rodchenko's constructivist visions and Evgenii Khaldei's humanist landscapes to Igor Moukhin's scenes of urban spectacle and alienation in the works of Russia's key 20th-century photographers, Moscow ventures beyond the expected image as a site of famous landmarks, architectural treasures and dramatic lifestyles.

Early 20th-century photographers Boris Ignatovich and Arkadii Shaikhet saw themselves in the vanguard of an emerging mass-media culture, defining with their cameras the visual experience of Soviet modernity. For nearly 70 years, Soviet photography was assigned the duty of maintaining the ideological rigidity of the Soviet State. Yet, as examples of the work of Iakov Khalip, Anatolii Egorov, Mikhail Savin, and Mark Markov-Grinberg show, Soviet photographic practices were much more complex than has been previously acknowledged. The works of these photographers remain intensely compelling to a modernist eye.

Contemporary Russian photographers, such as Lev Melikhov, Valerii Stigneev and Sergei Leontiev, engage with the legacy of the Soviet documentary photography. But for them the documentary is a complex and multivalent genre, which incorporates subjectivity, ambiguity and reflexivity and comments on social and cultural issues without losing sight of the position from which that commentary is made. In the recent photographs by Vladimir Kupriyanov, Igor Moukhin, Anna Gorunova and Pakito Infante, the "real" space of Moscow is replaced by an imaginary and optical spaces of virtuality.

The works in the exhibition are on loan from Moscow's Cultural Center Dom, and many are being shown outside Russia for the first time. In conjunction with the exhibition, the Wallach Art Gallery is publishing an illustrated catalogue with a scholarly essay by the exhibition curator, Nadia Michoustina, a Ph.D. candidate in Columbia University's Department of Slavic Languages. The essay presents a nuanced history of Russian photography of the 20th century, and contributes to an interpretation of extraordinary images.

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How to update ownership information Submit a request to transfer ownership or change the name Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration.

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Moscow: City, Spectacle, Capital of Photography, an exhibition of 20th-century photographs of Moscow, opens at Columbia University's Miriam and Ira D. Wallach Art Gallery on Wednesday, April 30, 2003 and remains on display through Saturday, June 21, 2003.. Moscow has been a powerful magnet for many Russian photographers of the 20th century. Moscow: City, Spectacle, Capital of Photography ...

The first bill, F23-R04 is ASUI's endorsement for three candidates running for the Moscow City Council. Bryce Blankenship, Drew Davis, and Sandra Kelly were the candidates ASUI members chose after conducting a forum with all the potential members. Three seats are open for the Moscow City Council and voting is on November 7.

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