Trademark owners can freely sell their trademark or transfer it without any compensation. Transfers of trademark ownership happen when the owner of trademark rights is changed. Examples of when transfers of trademark rights might happen include when a company is buying another company, or when a business buys product rights from another company or individual.
Deed of Assignment
A deed of assignment is used where the trademark owner (the “assignor”) transfers all or part of their right, title, and interest in a trademark to another entity (the “assignee”). A deed of assignment can be done in one transaction, by transferring all ownership rights of trademarks detailed in the deed. No payment is required for it to be valid.
A deed of assignment must be in writing and should include:
- The names and addresses of the assignor and assignee
- A description of the trademark right, i.e., Japanese trademark registration number to be transferred
- A statement that the assignor transfers the trademark right to the assignee
- Seals/Signatures of the parties and the date of the agreement execution
Recording Trademark Assignment
Although a deed of assignment transfers ownership in trademark right, it does not change the registration of the ownership. To be valid and enforced, the trademark assignment must be recorded with the Japan Patent Office (“JPO”). The parties must submit a deed of trademark assignment along with a statutory request to change the ownership.
Joint Application Rule
It is noteworthy that the Japanese law provides the request to change trademark ownership with the JPO should be applied jointly by assignor and assignee even though assignor agrees to assign their interest in the property to the assignee in the deed.
Consequently, mere signatures of both parties on the deed of the assignment are insufficient to meet this requirement.
To record the assignment of trademark registration with the JPO requested solely in the name of the assignee, which often happens, as a matter of fact, the deed should contain a declaration that the assignor would agree and never oppose assignee to solely request the transfer of trademark right with the JPO. (Article 8 of Japan Trademark Registration Order)
It is mandatory to pay an official fee, JPY30,000 per registration in order to register the change in ownership with the JPO.
Meanwhile, where the transfer arises from general succession, e.g., inheritance, M&A, it costs JPY3,000 per registration.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM