Trademark assignment (CIPO registration)

Where a brand is part of what a buyer is purchasing, its trademarks can change hands by assignment. The Trademarks Act is a federal statute and provides for a register kept under the supervision of the Registrar; the Canadian Intellectual Property Office (CIPO) publishes the guidance. See how to transfer a trademark when buying a business.

What the Act and CIPO say

Section 48(1) of the Act says a trademark, whether registered or unregistered, is transferable, either in connection with or separately from the goodwill of the business, and for all or some of the goods or services; s. 48(2) adds that a transfer can still leave a trademark held not to be distinctive if, as a result of the transfer, two or more persons held and exercised rights to use confusing trademarks. Section 48(4) has the Registrar, subject to the regulations, register the transfer of a registered trademark on request. Section 26(1) provides for a register of trademarks and of transfers relating to each registered trademark. CIPO’s guide says you can sell, bequeath or transfer your rights through an assignment, and that to avoid ownership disagreements you should formally tell the Registrar about changes in ownership. It adds that you should also report anything else affecting ownership, such as a change of name or a business merger.

What to check or ask

• Whether each mark is registered or unregistered, and who the register shows as owner
• Whether the assignment covers all of the goods and services or only some
• Who will tell the Registrar of the change, and when