10 Clauses to Include in a Trademark Assignment Agreement

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Trademark owners usually file a recordal of change of assignment with the Trademarks, Patents and Designs Registry in Nigeria, in order to maintain current records of trademark ownership. As part of the recordal process, they need to furnish the registry with a trademark assignment agreement (sometimes called a Deed of Assignment). This article reviews 10 clauses you should consider including in your trademark assignment agreement.

What is a Trademark Assignment Agreement

The trademark assignment agreement is a legal document used by the owner of a trademark (Assignor) to transfer ownership of the mark to a future owner (Assignee).

Drafting the Agreement

In drafting the trademark assignment, you must ensure the following:

1. Description of the Trademarks: The trademarks assignment agreement must provide a description of the trademark(s) to be assigned. For example the agreement may state.

“WHEREAS, the Assignor is the proprietor and beneficial owner of several trademark applications in Nigeria (the Trademarks), of which particulars are set forth as follows:

TRADEMARKSCLASSAPPLICATION NUMBER TERRITORY
Trademark A3F/TM/O/2020/XXXXXNigeria
Trademark B5F/TM/O/2020/XXXXXNigeria
Trademark C9F/TM/O/2020/XXXXXNigeria
Trademark D42F/TM/O/2020/XXXXXNigeria

2. Effective Date: The trademark assignment agreement must clearly state the date on which the transfer occurs. For example:

“This Agreement shall come into effect on the date on which this Agreement is registered by the competent authority as required by the laws of the Territory. The Parties hereto agree that this Agreement shall be submitted to the aforesaid authority in the Territory for its registrations. “

3. Identify the Trademark Owner or Assignor: The trademark assignment agreement must clearly state the name, business address, and provide a description of the Assignor. For example:

“ABC Limited, a corporation organized and existing under the laws of Ghana, Company #123, having its registered office at suite No. XYZ Street, Accra, Ghana (the Assignor)”.

4. Identify the Future Trademark Owner or Assignee: The trademark assignment agreement must clearly state the name, business address, and provide a description of the Assignee. For example:

“DEF Limited, a corporation organized and existing under the laws of Kenya, Company #345, having its registered office at suite No. XYZ Street, Nairobi, Kenya (the Assignee)”.

5. Consideration for the Assignment: The trademark assignment agreement should state how much consideration is being offered to the trademark owner (Assignor) as an incentive to transfer the trademarks to the Assignee. For example:

” For and in consideration of the sum of USD 2,000 (two thousand US dollars) paid by the Assignee to the Assignor (the receipt of which is hereby acknowledged), the Assignor does hereby assign to the Assignee all rights, tittle and interests derived from and in connection with the Trademarks in the Territory as well as good will of the business in which the Trademarks are used”.

6. Representation and Warranty of Trademark Ownership: The trademark assignment agreement should include any warranties or representations the trademark owner makes to the future owner (Assignor). For example:

The Assignor represents and warrants that it is the sole proprietor of all rights, title and interests derived from and in connection with the Trademarks in Territory as well as good will of the business in which the Trademarks are use, and that the assignment of the Trademarks from the Assignor to the Assignee shall not cause any infringement of industrial property rights of any third party in the Territory”.

7. English Translation and Amendments in Writing: The trademark assignment agreement should be written in English. If the Agreement is not written in English, a detailed translation should be provided. The agreement should also state that future amendments, modification or alterations to the terms be made in writing.

8. Dispute Resolution: The trademark assignment agreement should clearly state how disputes and controversy or claims arising out of the agreement will be settled.

9. Geographic Scope: In addition to describing the trademarks, the agreement should provide information on the region or territory affected by the transfer of ownership.

10. Signatures from both parties: The agreement should include a section for execution. Both the Assignor and the Assignee are expected to sign the trademark assignment agreement.

For more information on drafting and filing trademark assignment agreements in Nigeria, please email trademarks@nlipw.com. The article is intended to provide general information about the subject matter. Professional legal advice should be sought about specific circumstances.

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About Ufuoma Akpotaire 310 Articles
Ufuoma is a Senior Editor and Director of Regulatory Policy at NLIPW. She assists clients in the protection of copyrights, trademarks and patents. She counsels clients regarding validity and infringement matters and has experience acting against the infringement of IP and addressing counterfeit issues. She holds a Masters degree (LL.M.) from Columbia Law School, New York and a law degree from the University of Nigeria (LL.B. Honors). She is admitted to practice law in Nigeria and in the State of New York. Ufuoma cut her teeth in the intellectual property practice groups of some of the largest law firms in Nigeria and has years of experience working with major non-profit organizations in New York. Email: uakpotaire@nlipw.com

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