The Trademark Transfer Agreement is an agreement whereby the owner (transferor) of this type of industrial property transfers the ownership of the trademark and all related rights to another subject (transferee).
With this contract, the trademark is transferred exclusively and definitively to the transferee who will become the new and sole owner. The transfer of the registered trademark must always be in writing and governs all aspects of the transfer, such as any consideration for the transfer, total or partial transfer of the trademark, etc.
Remember that the trademark is the distinctive sign created to distinguish the products and/or services of a company from those of other companies operating on the market. The trademark can be any sign that can be represented graphically (eg drawings, letters, numbers, sounds, words, shape of a product, color combination, etc.). The trademark can be transferred without the need to transfer the company (the commercial name of the company) as well.
When using the trademark transfer agreement
The transfer of the trademark can be total or partial. The total assignment of the trademark is used when you want to transfer all the rights relating to the trademark and all the products and/or services covered by the trademark. The partial transfer of the trademark is used, on the other hand, when the owner wants to transfer the rights relating to some products and/or services distinguished by the trademark.
For example, the owner of the trademark “ABC” registered in class 25 (articles of clothing, shoes, headgear) can assign that trademark to a company to allow the sale of only the articles of clothing. In this case, the owner can continue to use the trademark for the other products of the category (shoes and hats). If, on the other hand, the owner assigns the trademark in its entirety, he definitively deprives himself of the possibility of continuing to use the trademark.
With this contract, it is also possible to assign both a registered trademark or trademark in the process of registration and an unregistered trademark (de facto trademark) which, however, enjoys weaker legal protection. Anyone who uses a trademark without registering it has the possibility of continuing to use it, even if the registration is carried out by third parties, in the manner and in the territory in which they have always used it, but without being able to claim exclusive use of the trademark (Article 2571 of the Italian Civil Code.). Those who obtain registration, on the other hand, enjoy an absolute presumption of ownership of the right and protection extended to the entire territory in which it was registered.
The assignment contract is used when the ownership of the trademark is to be definitively transferred. Conversely, if the owner of a trademark wants to grant the temporary use of the trademark or in a specific territory, he will have to use the license agreement for the use of the trademark. For example, with the license, the owner authorizes another person to use the trademark for a period of 2 years, against the payment of a royalty on sales.
Transcription of the transfer of the registered trademark
The transcript is the optional instrument to make public and effective against third parties the transfer of ownership of the trademark. In fact, transcription serves to resolve disputes when multiple buyers claim ownership of the same brand. In this case, the one who transcribes first prevails (Article 139 of the Italian Criminal Code).
The transcription of the trademark transfer can be performed at the office where the trademark was registered (eg Italian Patent and Trademark Office, for national and international trademarks). The applicant must submit an application for registration in stamp duty (electronically or on paper) with the details of the assigned trademark (application or registration number). Furthermore, the application must be completed by some attachments: the original or certified copy of the trademark transfer contract and the attestation of payment of the registration fees.
What the model of the trademark assignment contract contains
Our trademark transfer agreement meets all legal requirements. The main clauses concern:
- Subject: to describe exactly the brand assigned
- Total or partial transfer of the trademark: to choose whether the transfer is total or partial (in the latter case, the products and/or services for which the trademark is transferred must be specified)
- Fee: to specify a fixed, variable or both types. Alternatively, it is possible to provide that the transfer is free
- Guarantees and declarations of the transferor: with which the owner guarantees that the trademark is not encumbered by any constraint, which does not violate the rights of third parties, not to compete with the transferee, etc.
- Obligations of protection: obligations of the transferor to hold the transferee harmless in the event of disputes by third parties on the trademark
- Charges and expenses: the expenses are borne by the transferee with the assignor’s commitment to collaborate for the possible transcription of the trademark
After the purchase, we will guide you step by step through all the subsequent formalities necessary for your contract to be legally binding between the parties.
Information you need
To complete the document, all the details of the parties and the assigned brand are required.
Remember that our interview does not generate a simple facsimile of a trademark transfer agreement. Based on your answers, the system automatically draws up a customized contract model for your exact needs, guaranteeing its legal correctness.
The document can be modified in all its parts without time limits. Don’t worry so if you don’t have all the information available during the interview, you can always enter it later.
- Trademark transfer agreement
- Transfer of the registered trademark
- Transfer of the unregistered trademark
- Transfer of the trademark
- Intellectual Property Transfer Agreement
- Copyright assignment agreement
Other useful templates and facsimiles
- Trademark Registration: to register a national, European or international trademark
- Renewal of a Registered Trademark: to extend the duration of a registered trademark beyond the limit of 10 years from the original registration date
- Patent Filing and Registration: to deposit and protect your invention for exclusive use at the national, European or international level
- User License Agreement: to use any intellectual property right
- Joint Venture: to create a partnership aimed at a common project