Trademark Assignment (Hong Kong)

A Trademark Assignment in Hong Kong records the transfer of ownership in the rights or receivables it covers.

Section 26(3) of Cap. 559 requires a trade mark assignment to be in writing and signed by or on behalf of the assignor. Section 26(1) permits a registered trade mark to be assigned with or without the goodwill of the business. An assignment without goodwill — sometimes called a bare assignment — transfers only the registration itself. By contrast, an assignment of an unregistered trade mark protected by passing off must generally be accompanied by goodwill, as the right to prevent passing off is inseparable from goodwill.

Section 28(4) of Cap. 559 provides that if an application to record the assignment at the Trade Marks Registry is not made within 6 months of the date of the assignment, the assignee cannot claim costs in any proceedings between the date of the assignment and the date of the application. Failure to register promptly may also affect the assignee's priority against subsequent dealings with the mark. The application to record an assignment is made using Form T4, with a fee of HKD 300 per mark for paper filing or HKD 230 per mark via the IPD's e-Filing system.

The IPD maintains the register of Hong Kong trade marks, which is publicly searchable through the Trade Marks Registry's online database. Once the assignment is recorded, the register is updated to reflect the assignee as the new registered proprietor. Third parties conducting due diligence — including prospective licensees, investors, and acquirers — will check the IPD register to confirm ownership.

A trade mark that is not used in the course of trade in Hong Kong for a continuous period of 3 years is vulnerable to revocation under Section 52 of Cap. 559. Where an assignment is made and neither the assignor nor the assignee uses the mark, revocation risk increases. Forms-legal.com provides a Trademark Assignment template compliant with Cap. 559 and Trade Marks Registry requirements.

Due diligence on the target trade mark before execution of the assignment is essential. The assignee should search the Trade Marks Registry database (available through ICRIS at the Intellectual Property Department's website) to verify the current registration status, any recorded licences or security interests, and whether any opposition, cancellation, or revocation proceedings are pending before the Registrar of Trade Marks. An assignment of a mark subject to undisclosed proceedings may transfer unexpected legal risk to the assignee.

The Inland Revenue Ordinance (Cap. 112) governs the tax treatment of trade mark assignment proceeds and purchase prices. Receipts from the sale of intellectual property rights may be subject to profits tax under Cap. 112 if the assignment is part of a trade or business in intellectual property, or if the assigned marks were previously used in a business carried on in Hong Kong. The IRD's position on IP disposals should be confirmed by a tax adviser before completing significant trade mark assignments. Forms-legal.com provides a Trademark Assignment template compliant with Cap. 559 and Trade Marks Registry requirements.

A Trademark Assignment is needed in Hong Kong whenever a business or individual permanently transfers ownership of a registered trade mark to another party.

Business sales and acquisitions — where a buyer acquires a company or business assets including trade marks — require formal trade mark assignment documentation. In a share acquisition, trade marks remain owned by the target company and no formal assignment is needed. In an asset purchase, however, each trade mark must be assigned by a separate written instrument complying with Section 26(3) of Cap. 559. The assignment should be completed at or promptly after completion of the business acquisition to confirm the buyer has clear title.

Family business succession — where founders transfer their business brands to the next generation or to a corporate vehicle — requires a trade mark assignment to document the transfer of IP ownership. The assignment should be accompanied by an updated registration at the IPD to confirm the register accurately reflects the new owner.

Corporate restructuring — where trade marks held by one group company are consolidated into an IP holding company, or transferred to a new operating entity — requires assignments for each mark transferred. Transfer pricing and arm's length considerations under the Inland Revenue Ordinance (Cap. 112) may apply where the assignment is between related parties.

Brand monetisation — where a business owner who has built a valuable trade mark wishes to sell the mark to a strategic buyer, a competitor, or a brand investor — requires a carefully drafted assignment with appropriate warranties from the assignor regarding the validity and freedom from encumbrance of the mark.

Dissolution of partnerships or joint ventures holding trade marks requires the partners or joint venture parties to agree on ownership of shared marks, with a formal assignment executed by the outgoing party in favour of the continuing party. The Trade Mark Licence Agreement is the appropriate document when temporary use rights are needed rather than a permanent transfer of ownership.

Security interests over trade marks — where a lender takes a charge over a borrower's registered trade marks as security for a loan — require registration at the Trade Marks Registry to be effective against third parties. Where a borrower defaults and the lender enforces the security by selling the trade mark, a trade mark assignment is the instrument by which the mark is transferred to the purchaser of the secured assets. The Companies Registry records charges over trade marks owned by companies under the Companies Ordinance (Cap. 622).

A complete Hong Kong Trademark Assignment must include the following essential elements to comply with the Trade Marks Ordinance (Cap. 559) and to protect both the assignor and the assignee.

Parties: Full legal names and addresses of the assignor and assignee, including company registration numbers for corporate parties. The assignor must be the registered proprietor of the trade mark as shown on the Trade Marks Registry records at the IPD.

Trade Mark Identification: The trade mark registration number(s), the mark representation (word mark, logo, combined mark), the class(es) of goods or services in the Nice Classification, and the current registration status. Where multiple marks are being assigned, each should be listed separately.

Consideration: The purchase price or other consideration in HKD (or other agreed currency) for the assignment. Where the assignment is by way of gift between related parties, this should be expressly stated. No GST or VAT applies in Hong Kong. For assignments between related parties, transfer pricing under the Inland Revenue Ordinance (Cap. 112) should be considered.

Assignment With or Without Goodwill: An express statement of whether the assignment includes the goodwill of the business associated with the mark, consistent with Section 26(1) of Cap. 559. If without goodwill, the parties should consider the revocation risk under Section 52 if neither party uses the mark after the assignment.

Assignor's Warranties: Representations and warranties by the assignor that: the mark is validly registered and in force; there are no pending cancellation, revocation, or opposition proceedings; the mark is not subject to any licence, security interest, or other encumbrance that has not been disclosed; and the assignor has the authority to assign the mark.

Recordal at Trade Marks Registry: An obligation on the assignee to apply to record the assignment at the IPD using Form T4 within 6 months of the date of the assignment, as required by Section 28(4) of Cap. 559, and an obligation on the assignor to cooperate fully with the recordal process including signing any required documents.

Post-Assignment Cooperation: The assignor's obligation to assist with any proceedings, correspondence, or renewals relating to the mark that arise from matters predating the assignment date, and to notify the assignee of any infringement or challenge to the mark that comes to the assignor's attention after completion.

IP Warranties and Indemnity: The assignor's indemnity of the assignee against any third-party claims of infringement arising from the assignor's pre-assignment use of the mark. The assignee's responsibility for any infringement claims arising from post-assignment use.

Governing Law: The laws of the Hong Kong Special Administrative Region, with disputes referred to the Court of First Instance (IP Division) or HKIAC arbitration. The IPD administers the Trade Marks Registry and processes recordal applications.

Notice to Existing Licensees: Where the assigned trade mark is the subject of an existing licence recorded at the Trade Marks Registry, the assignee should give notice of the assignment to the licensee and confirm whether the licence continues on the same terms post-assignment. An existing registered licensee retains their licence rights against the assignee — the assignment does not automatically terminate existing licences. Forms-legal.com provides a Trademark Assignment template covering all elements required under the Trade Marks Ordinance (Cap. 559) for Hong Kong IP transactions.

Post-Assignment Use: Confirmation that from the effective date of the assignment, the assignor will cease all use of the assigned trade mark and will not represent to any third party that it continues to be the owner or authorised user of the mark. Any residual use of the mark by the assignor after assignment — on websites, social media profiles, or printed materials — should be phased out within an agreed wind-down period specified in the agreement. Forms-legal.com provides a Trademark Assignment template compliant with the Trade Marks Ordinance (Cap. 559) for Hong Kong intellectual property transactions.