One of the benefits of having a registered trademark is enjoying the exclusive rights given to the proprietor in the use of the mark and the goods and/or services that are protected by it. As an intangible property, it can also be transferred another party to generate more profit. There are two ways to transfer a registered trademark: licensing and assignment.
Licensing refers to the giving of the same rights and protection to another party, allowing them to sell the same goods and/or services under the brand. The third-party also has the full legal rights to file for an infringement in case there is a violation of the intellectual property laws by another company. It is the responsibility of the original trademark owner to record the licensees in the register.
A form and corresponding fees must be submitted to the Intellectual Property Office of Singapore (IPOS). The documentation and fees are done per one trademark. It is within the right of the trademark owner to license and terminate the license based on their agreement with the licensees. A licensing document or agreement should contain the following information: pertinent details about the licensor and licensees; trademark details; usage scope and terms; standards and quality control; financial terms; and details of the exclusivity of the license.
Assignment of a trademark refers to the legal transfer of the owner’s title, rights, and interest in a trademark. In Singapore, the Trade Marks Act Cap. 332 gives the new owner the responsibility to apply and record in the Register. The original trademark owner, regardless if the application for the trademark is pending or already approved, is also responsible for recording the change of ownership in the registry. The record of the assignment needs a correspondent document and fees filed at IPOS. Before the transfer of an intellectual property such as a trademark can be completed, however, the original owner must update all the necessary information first.
Once completed, an Assignment Agreement or a Deed of Assignment or a Sale and Purchase Agreement must be written once the negotiations for the assignment are done. These documents, however, may only be applicable within the Singapore jurisdiction, so the assignment of trademarks registered internationally will require more documents. The assignment is then recorded by the assignee or new owner. If the new trademark owner fails to record the transfer of intellectual property, the procedure is not considered valid.
It is necessary to consult local and foreign counsel when undertaking an assignment of the trademark to avoid problems in the future regarding the transfer.