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Assignment of Trademark

Click on the button to open trademark dropdown topic menu including search and registration, renewal, recording of change of name and address, recording of assignment and license, appeal against refusal, oppostion to a third party's mark, etc.

SEARCH REGISTRATION RENEWAL CHANGE OF NAME, MERGER ASSIGNMENT LICENSE OPPOSITION APPEAL TO REFUSAL INFRINGEMENT BORDER CONTROL

 

 

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Efficient drafting and recording of trademark license

Q. Is recording of trademark license required?
A. It is not required but a licsense will not be effective against a third party of it is not registered.

Q. Who will be considered to be a third party?
A. It's tricky but it clear in the following examples: A sublicense may be deemed invalid if the master one has not been registered; or licensee may not take action against infringement even if the sublicense expressly permits it to do so.

Q. What documents are required for recording of a trademark license?
A. An original or certified copy of license agreement in duplicate; and a Power of Attorney from either of the parties.

Q. Are there formal requirements for a license agreement?
A. Yes, there must be full name and addresses of licensor and licensee, a license fee, type pf license (exclusive or non-exclusive), rights licensed, and territory.

Q. Can a license of a pending mark be recorded?
A. No, only registered ones.

Q. Is notarization, legalization is required for license agreement and Power of Attorney?
A. No, a signature and name of the person authorized by the parties will be sufficient?

Q. Can a copy of the required documents sent by email, fax be accepted by IP Office?
A. No, original documents or certified copy are required.

Q. Can a license agreement, Power of Attorney state only the name of the parties without their address?
A. No, IP Office will reject the documents.

Q. Can license and a sub-license be registered simultaneously ?
A. Yes, they can.

Q. How long does it take for Trademark Office to record a change?.
A. 3-4 months on average.

Q. When must the parties request IP Office to record a license?
A. It will be up to the parties to decide. However it is preferred the parties request IP Office to record as soon as possible after signing.

Q. How long registration of a trademark license be valid ?
A. It is up to the parties to decide but registration of a license will not be valid beyond the nearest expiration date of the licensed trademark, that means no license registration can be valid for more than 10 years. .

Q. Does it means a trademark license will have to be renewed ?
A. Yes, the licensor must renew the licensed mark registration before or at the same time of requesting IP Office to renew a trademark license agreement.