Trademark Assignment Agreement (England & Wales)
This Trademark Assignment Agreement (“Agreement”) is made on [Assignment Date] between:
(1) [Assignor Name], [Assignor Type], of [Assignor Address] (the “Assignor”); and
(2) [Assignee Name], [Assignee Type], of [Assignee Address] (the “Assignee”).
Together referred to as the “Parties” and each as a “Party”.
BACKGROUND
A. The Assignor is the registered proprietor of the trade mark described in the Schedule to this Agreement (the “Trade Mark”), registered at the United Kingdom Intellectual Property Office (the “UK IPO”).
B. The Assignor has agreed to assign to the Assignee all of the Assignor’s right, title, and interest in and to the Trade Mark on the terms set out in this Agreement, pursuant to section 24(1) of the Trade Marks Act 1994.
C. The Trade Marks Act 1994 provides that a registered trade mark is personal property and is assignable and transmissible in the same way as other personal or moveable property.
1. DEFINITIONS
- “Assigned Rights” means all of the Assignor’s right, title, and interest in and to the Trade Mark, including the registration, the right to apply for renewals, and the right to sue for past and future infringement.
- “Business Day” means any day other than a Saturday, Sunday, or bank holiday in England and Wales.
- “Goodwill” means the goodwill of the business carried on by the Assignor in connection with the Trade Mark, including the reputation, customer relationships, and distinctiveness of the mark in the market.
- “Trade Mark” means the registered trade mark described in the Schedule to this Agreement.
- “UK IPO” means the United Kingdom Intellectual Property Office.
2. ASSIGNMENT OF TRADE MARK
2.1 In consideration of the payment of the consideration set out in clause 3 and other good and valuable consideration (the receipt and sufficiency of which the Assignor hereby acknowledges), the Assignor, with [Title Guarantee], hereby assigns and transfers to the Assignee, absolutely and unconditionally, all of the Assigned Rights.
2.2 The Assigned Rights assigned under this Agreement include:
- the registration of the Trade Mark at the UK IPO as described in the Schedule;
- all rights to apply for renewal of the Trade Mark registration;
- all rights, claims, and remedies (including the right to sue) for past, present, and future infringement of the Trade Mark;
- all correspondence, prosecution history, and records held by the Assignor relating to the Trade Mark registration; and
- any foreign trade mark registrations and pending applications corresponding to the Trade Mark (if any).
2.3 This Assignment is made pursuant to section 24(1) of the Trade Marks Act 1994, which provides that a registered trade mark is assignable and transmissible, whether or not in connection with the goodwill of the business in which it is used.
3. CONSIDERATION
3.1 The consideration for the assignment of the Assigned Rights is of the following type: [Consideration Type].
3.2 Where the consideration is a monetary payment, the Assignee shall pay the sum of £[Monetary Amount] to the Assignor by bank transfer to such account as the Assignor shall notify in writing, on or before the date of this Agreement or on such other date as the Parties may agree in writing.
3.3 Where the consideration is a royalty or ongoing payment arrangement, the terms are as follows: [Other Consideration].
3.4 The Assignor acknowledges receipt of the consideration as adequate and sufficient for the transfer of all Assigned Rights.
4. WARRANTIES AND REPRESENTATIONS
4.1 The Assignor warrants and represents to the Assignee that as at the date of this Agreement:
- the Assignor is the sole registered proprietor of the Trade Mark and has full right, power, and authority to assign the Assigned Rights;
- the Trade Mark registration is valid, subsisting, and in good standing at the UK IPO and all renewal fees have been paid;
- the Assignor has not assigned, licensed, mortgaged, charged, or otherwise encumbered the Trade Mark to any third party;
- there are no pending or threatened claims, oppositions, or proceedings challenging the validity, ownership, or registration of the Trade Mark;
- the Assignor is not aware of any third-party use of the Trade Mark or any confusingly similar sign that would constitute infringement; and
- the Trade Mark has been put to genuine use in the United Kingdom in relation to the registered goods and/or services within the past five years, so as not to be vulnerable to revocation under section 46 of the Trade Marks Act 1994.
4.2 The warranties in clause 5.1 shall survive the completion of this Agreement.
5. UK IPO REGISTRATION
5.1 Pursuant to section 25 of the Trade Marks Act 1994, the Assignee shall apply to register the change of ownership at the UK IPO using the prescribed form (currently Form TM16) and pay the applicable UK IPO fee within six (6) months of the date of this Agreement.
5.2 The Parties acknowledge that, under section 25(3) of the Trade Marks Act 1994, until the change of ownership is registered at the UK IPO, the Assignee may not be entitled to damages or an account of profits in respect of any infringement of the Trade Mark occurring after the assignment date but before the date of registration of the assignment, unless the court is satisfied that the infringing party had actual notice of the assignment.
5.3 The Assignor shall provide all reasonable assistance and cooperation to the Assignee in connection with the UK IPO registration, including executing any further documents or declarations required by the UK IPO.
6. POST-ASSIGNMENT OBLIGATIONS
6.1 Following completion of this Agreement, the Assignor shall: (a) deliver to the Assignee all documents relating to the Trade Mark, including the registration certificate and records of use; (b) cease all use of the Trade Mark with immediate effect; and (c) update any domain names, websites, social media accounts, or marketing materials bearing the Trade Mark to reflect the change of ownership.
6.2 The Assignor shall not, following the date of this Agreement, apply to register any trade mark identical to or confusingly similar to the Trade Mark in any jurisdiction.
6.3 If requested by the Assignee, the Assignor shall execute such further deeds or documents as may be reasonably necessary to vest the Assigned Rights in the Assignee or to record the assignment at any relevant intellectual property registry.
7. GENERAL PROVISIONS
7.1 Entire Agreement. This Agreement, including the Schedule, constitutes the entire agreement between the Parties in relation to the Trade Mark and supersedes all prior negotiations, representations, and agreements.
7.2 Notices. Any notice under this Agreement shall be in writing and delivered by hand, first-class post, or email to the relevant Party’s address set out above.
7.3 Third Party Rights. A person who is not a Party to this Agreement has no rights under the Contracts (Rights of Third Parties) Act 1999 to enforce any of its terms.
7.4 Severance. If any provision of this Agreement is found to be invalid or unenforceable, the remaining provisions shall continue in full force and effect.
7.5 Governing Law. This Agreement shall be governed by and construed in accordance with the laws of [Governing Law], and the Parties submit to the exclusive jurisdiction of the courts of [Governing Law].
SCHEDULE — TRADE MARK DETAILS
Trade Mark Name / Description: [Trade Mark Name]
UK IPO Registration Number: [IPO Number]
Date of Registration: [Registration Date]
Nice Classification and Goods/Services: [Nice Classes]
Registered Proprietor (Assignor): [Assignor Name]
IN WITNESS WHEREOF, the Parties have executed this Trademark Assignment Agreement as of the date first written above.
Assignor
________________
Signature
Date: ________________
Assignee
________________
Signature
Date: ________________
What Is a Trademark Assignment Agreement (England & Wales)?
A Trademark Assignment Agreement in the United Kingdom transfers the intellectual-property rights from one owner to another and records exactly which rights pass, and is shaped by the Trade Marks Act 1994.
The Trade Marks Act 1994 marked a significant liberalisation of trade mark law in the United Kingdom by expressly permitting the assignment of a registered trade mark with or without the goodwill of the associated business. Under the earlier Trade Marks Act 1938, a 'bare assignment' (an assignment without goodwill) was generally void on the ground that it amounted to a form of misrepresentation, since it allowed the mark to be used by the new owner in a context entirely separate from the business that had originally built up the mark's reputation. Section 24(4) of the Trade Marks Act 1994 abolished this restriction, giving brand owners and investors significantly greater commercial flexibility in structuring trade mark transactions.
For an assignment to be fully effective in England and Wales, it must comply with two key requirements. First, the assignment must be in writing and signed by the assignor. An oral assignment of a registered trade mark is ineffective. Second, the change of ownership should be registered at the UK Intellectual Property Office (UK IPO) within six months of the assignment date, by filing Form TM16 under section 25 of the Trade Marks Act 1994. While the assignment binds the parties from the date of execution, failure to register it at the UK IPO within six months may deprive the assignee of the right to claim damages for infringement occurring in the period between the assignment date and the date of registration.
A well-drafted Trademark Assignment Agreement includes not only the operative transfer clause but also thorough warranties from the assignor as to the validity and ownership of the mark, provisions dealing with goodwill, post-assignment obligations on the assignor (such as ceasing use of the mark and cooperating with UK IPO registration), and a clear statement of the consideration paid. The level of title guarantee — full, limited, or no warranty — determines the implied covenants given by the assignor under the Law of Property (Miscellaneous Provisions) Act 1994.
The United Kingdom Trademark Assignment Agreement (England & Wales) Trademark Assignment Agreement is designed specifically for use in England and Wales and is governed by the Trade Marks Act 1994, providing a legally sound and commercially thorough framework for the transfer of trade mark ownership.
The legal framework governing the Trademark Assignment Agreement (England & Wales) in United Kingdom draws on several key statutes and regulatory bodies. Under the Companies Act 2006, Companies House maintains the register of UK companies. Section 386 of the Companies Act 2006 sets accounting record obligations. The Competition and Markets Authority (CMA) enforces the Consumer Rights Act 2015. The Financial Conduct Authority (FCA) regulates financial services under the Financial Services and Markets Act 2000. The High Court of Justice has jurisdiction under the Senior Courts Act 1981. Parties executing a Trademark Assignment Agreement (England & Wales) in United Kingdom should confirm the document reflects current law, including any amendments enacted since the original drafting date. The Trade Marks Act 1994 sets the foundational requirements.
When Do You Need a Trademark Assignment Agreement (England & Wales)?
A Trademark Assignment Agreement is needed in any situation where the legal ownership of a registered trade mark is to be permanently transferred from one party to another in the United Kingdom.
Business sales and acquisitions represent the most frequent context. When a business is sold by way of an asset purchase, all intellectual property assets — including trade marks — must be individually and expressly assigned to the buyer. Trade marks do not transfer automatically as part of a general business sale: without a formal written assignment, the seller remains the registered proprietor at the UK IPO and the buyer has no legal right to use or enforce the mark. The Trademark Assignment Agreement should be executed simultaneously with the completion of the broader business sale.
Startup founders who registered trade marks in their personal names before incorporating a company frequently need to assign those marks to the newly formed company. Where the business is then developed by the company rather than the individual, having the trade mark registered in the company's name is essential to protect the company's intellectual property assets. A Trademark Assignment Agreement from the founder to the company is the correct instrument for this transfer.
Portfolio reorganisations within corporate groups often require trade marks to be transferred between group companies, particularly where a new holding company has been formed or where a subsidiary is being sold. Each transfer requires a formal written assignment for each jurisdiction in which the mark is registered.
Brand acquisitions are a growing category of trade mark transaction. Investors, brand management companies, and strategic acquirers frequently purchase trade marks as standalone intellectual property assets, separate from the underlying business. This is particularly common in the fashion, consumer goods, and technology sectors, where trade marks may have significant independent value.
A Trademark Assignment Agreement is also needed when a long-standing exclusive licensee wishes to purchase the mark outright from the licensor, converting their licence into full ownership. Without a formal written assignment, the licensee cannot become the registered proprietor at the UK IPO and will not have the right to bring infringement proceedings in their own name.
What to Include in Your Trademark Assignment Agreement (England & Wales)
A well-drafted Trademark Assignment Agreement for use in England and Wales must contain several key elements to be legally effective and commercially sound.
Parties and Date — The full legal names, addresses, and entity types (individual, limited company, LLP, etc.) of both the assignor and the assignee must be clearly stated, together with the date of execution. The assignment must be in writing and signed by the assignor to comply with section 24 of the Trade Marks Act 1994.
Schedule of Trade Marks — Precise details of the trade mark or marks being assigned must be included in the Schedule, covering: the trade mark name or a description of the mark (for device marks); the UK IPO registration number in the format UK00000000000; the date of registration; and the Nice Classification class numbers and the specific goods and services covered by the registration. These details must match the UK IPO register exactly. If multiple marks are being assigned, each should be separately listed.
Assignment Clause — A clear, unconditional assignment of all of the assignor's right, title, and interest in the trade mark, including the registration, the right to apply for renewals, and the right to sue for past and future infringement. The assignment should be stated to be absolute and permanent.
Goodwill — A clear statement of whether the trade mark is being assigned with or without the goodwill of the associated business, in accordance with section 24(4) of the Trade Marks Act 1994. Where goodwill is included, the assignor should covenant not to use the mark or any confusingly similar sign after the assignment.
Consideration — The price or other consideration paid for the assignment. This may be a lump sum in pounds sterling, a nominal sum (£1), a royalty arrangement, or other consideration. Payment should be documented as received.
Title Guarantee — The level of implied covenants given by the assignor under the Law of Property (Miscellaneous Provisions) Act 1994 — full title guarantee, limited title guarantee, or no warranty. Full title guarantee gives the widest protection to the assignee.
Assignor Warranties — Express warranties that the mark is validly registered, the assignor is the sole proprietor, no third-party rights conflict with the mark, the mark has been genuinely used, and there are no pending challenges. These should survive completion.
UK IPO Registration Obligation — The assignee's obligation to file Form TM16 at the UK IPO within six months and the assignor's obligation to cooperate in that process.
Post-Assignment Obligations — The assignor's obligations to cease use of the mark, deliver all related documents, and not apply to register any confusingly similar mark.
Third Party Rights and Governing Law — Exclusion of the Contracts (Rights of Third Parties) Act 1999 and a governing law clause confirming that the agreement is governed by the laws of England and Wales. The forms-legal.com Trademark Assignment Agreement (England & Wales) template covers the mandatory elements under Trade Marks Act 1994.
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Forms Legal. (2026). Trademark Assignment Agreement (England & Wales) (United Kingdom) [Legal document template]. Forms Legal. https://forms-legal.com/uk/business/intellectual-property/trademark-assignment-agreement-uk
"Trademark Assignment Agreement (England & Wales) (United Kingdom)." Forms Legal, 2026, https://forms-legal.com/uk/business/intellectual-property/trademark-assignment-agreement-uk.
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author = {{Forms Legal}},
title = {Trademark Assignment Agreement (England & Wales) (United Kingdom)},
year = {2026},
howpublished = {\url{https://forms-legal.com/uk/business/intellectual-property/trademark-assignment-agreement-uk}},
note = {Free legal document template. Based on Trade Marks Act 1994}
}Also available for these jurisdictions:
Frequently Asked Questions
A Trademark Assignment Agreement is a legal document that permanently transfers ownership of a registered trade mark from the current owner (the assignor) to a new owner (the assignee). In the United Kingdom, registered trade marks are personal property under section 24(1) of the Trade Marks Act 1994, and may be assigned and transmitted in the same way as other forms of personal or moveable property. The assignment must be in writing and signed by the assignor to be effective. Unlike copyright, which can arise automatically, a trade mark assignment requires an express written document. The assignment is effective between the parties from the date of execution, but to bind third parties (such as subsequent licensees or creditors) and to obtain the full protection of the Trade Marks Act 1994, the change of ownership must be registered at the UK Intellectual Property Office (UK IPO) using Form TM16, ideally within six months of the assignment date, under section 25 of the Trade Marks Act 1994.
Yes. Section 24(4) of the Trade Marks Act 1994 expressly provides that a registered trade mark may be assigned whether or not in connection with the goodwill of the business in which it is used. This is a significant liberalisation compared to the law that applied before the Trade Marks Act 1994, under which a 'bare assignment' of a trade mark without its associated goodwill was generally considered void or at least problematic on the grounds of misrepresentation. Under the current law, a bare assignment is valid, though it is still generally preferable to assign with goodwill where the circumstances permit, to reduce the risk of passing off claims or challenges to the mark's validity following the transfer. Where goodwill is assigned with the mark, the assignor should also formally transfer all customer relationships, business records, and reputational benefit associated with the mark.
Where an assignor transfers a trade mark with 'full title guarantee' under the Law of Property (Miscellaneous Provisions) Act 1994, the law implies certain important covenants on the part of the assignor: first, that the assignor has the right to dispose of the mark as they purport to; second, that the assignor will do all that they reasonably can to give the assignee the title they are purporting to give; and third, that the mark is free from all encumbrances and adverse rights other than those the assignee knows about at the date of the assignment. By contrast, 'limited title guarantee' implies only that the assignor has not personally incumbered the mark and is not aware of any encumbrance. An 'as-is' or 'no warranty' transfer gives no implied warranties whatsoever. In a commercial trade mark purchase, the assignee will typically insist on full title guarantee together with detailed express warranties about the validity, ownership, and freedom from encumbrance of the mark.
To register a change of ownership following a trade mark assignment, the assignee must file Form TM16 (Application to Record an Assignment) with the UK Intellectual Property Office (UK IPO). The TM16 form can be submitted online via the UK IPO's Intellectual Property Office Online platform, or in paper form by post. A separate TM16 form is required for each trade mark registration being transferred. Along with the completed TM16 form, the assignee must provide evidence of the assignment — typically, a copy of the executed assignment agreement or a statutory declaration confirming the assignment. The current UK IPO fee for recording a change of ownership is payable at the time of filing. It is very strongly recommended to file the TM16 within six months of the assignment date, as failure to do so may result in the assignee losing the right to claim damages for infringement that occurred between the assignment date and the registration date, under section 25(3) of the Trade Marks Act 1994.
A well-drafted Trademark Assignment Agreement will include detailed warranties from the assignor to protect the assignee from hidden risks. The key warranties the assignor should give include: that the assignor is the sole registered proprietor of the trade mark at the UK IPO; that the trade mark registration is valid, subsisting, and in good standing (all renewal fees paid); that the assignor has not granted any licence, security, mortgage, charge, or other encumbrance over the trade mark; that there are no pending or threatened oppositions, cancellations, or other proceedings before the UK IPO or courts challenging the validity or ownership of the mark; that the assignor is not aware of any third-party use that constitutes infringement; and that the trade mark has been put to genuine use in the United Kingdom in relation to the registered goods and/or services within the past five years, so as not to be at risk of revocation for non-use under section 46 of the Trade Marks Act 1994. These warranties should be given as at the date of the assignment and should survive completion.
This template is provided for informational purposes only and does not constitute legal advice. Laws vary by jurisdiction and change over time. Consult a qualified attorney for advice specific to your situation.Full disclaimer
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