• Transfer of TM Ownership

What is trademark assignment?


Trademark assignment is also known as the transfer of trademark ownership to another party. It is distinguished from licensing, which refers to the granting of the rights and protection to third-parties allowing them to use and profit from the trademark while the proprietor continues to enjoy the same benefits and protection of the registered trademark.

Trademark assignment is covered in Chapter 22 of the Trade Marks Work Manual provided by the Intellectual Property Office of Singapore (IPOS). Under the guidelines, assignment is divided into two types: co-ownership and assignment or transmission.


Co-ownership of Trademark

It is called a co-ownership of the trademark rights are granted to two or more people jointly. This means that the people who own the trademark are entitled to and are also subject to the shares of the trademark. One co-proprietor cannot assign the trademark without the consent of the other proprietors.


Assignment or Transmission of Trademark

A trademark, once registered, can be assigned and transmitted like any property. Intellectual property after all is treated the same way as any movable property because it has value in itself. However, assignment can also be partial or limited to a specific number of goods and/or services of that registered trademark.

The assignment is only effective if there is a document signed by or on behalf of the original proprietor.  It also needs to have the consent of assignment by the Registrar. The applicant will need to amend the application to update all the information in the required documents. Documents should be signed by all the partners, partners on behalf of the partnership, and other persons that are authorized to sign them. If it is on behalf of a corporate body, it should be signed by a secretary, director or principal officer. If it is on behalf on an unincorporated body, anyone who appears to the Registrar can legally sign the documents.

Take note that you will need to sign the Form CM8 if there is a change in the address for service. Detailed on the necessary documents are the name and address of the subsequent proprietor, date of assignment, and where the assignment is in respect to the trademark.


Assignment Based on International Registration

A license can be granted under the protection of the international trademarks as well as the granting of security interest over an internationally protected trademark. If a person is Singapore is granted the proprietorship of an already protected international trademark, he/she will also be granted the same protection under intellectual property and civil laws where the basic registration has been made. It is also recorded in the International Register if there is a change in the ownership. If there is any delay in the recording of the change of ownership, it can affect the assignee’s rights in claiming damages, profits, and statutory damages in case there is an infringement.

You can file for an international registration designating Singapore via the Madrid Protocol, specifically the WIPO on the form MM5 (E) as soon as possible. You can download the forms at the WIPO website. These forms and the pertinent documents are submitted via IPOS.