Section 26(1) and (2) of the Trade Marks Act 1990, provides for the assignment of a registered Trade Mark.
Assigning a Trade Mark means transferring ownership from one party to another.
The party who is transferring ownership is referred to Assignor and the new owner is referred to as the Assignee.
The assignment can be in connection to the goodwill of the business or not and it can be in respect of all the goods or services covered by the Trade Mark registration or just some of the goods/services.
A full assignment occurs when the Trade Mark owner assigns the ownership in all of the goods and/or services for which the Trade Mark is registered to the new owner.
A partial assignment occurs when the Trade Mark owner transfers the Trade Mark to the new owner with respect to only some of the goods and/or services covered by the Trade Mark registration.
Unregistered trade marks can also be assigned provided that at the time of the assignment:
1. The unregistered Trade Mark is used in the same business as a registered Trade Mark.
2. Assigned at the same time and to the same person as the registered Trade Mark.
3. Assigned in respect of the same goods for which the registered Trade Mark is being assigned and in respect of all the goods in relation to which the unregistered mark is used in that business.
Only the assignee, the assignor or an authorized agent of either the assignee or the assignor can record the assignment of the Trade Mark at the Registry. You can contact Trademark Infringement Attorney Lagos which will protect your Trade Mark rights and will provide the best information for your business.
Where the assignment is without the goodwill associated with the business, the Registrar may direct that the request for recordal be advertised in the Trade Marks Journal. Failure to comply with this directive implies that the assignee acquires no title or rights under the assignment.
Where the assignment is connected with the goodwill associated with the business the assignee should ensure that it is recorded at the registry in order for it to be effective against third parties.
Failure to record an assignment with the Registry means it is ineffective against a third party subsequently acquiring, in good faith, a conflicting interest in or under the Trade Mark. This failure can also mean that the assignee will not be entitled to damages or an account of profits in infringement proceedings.
Due to the risks to the assignee from non recordal of the assignment of a Trade Mark, it is good practice for the assignee to be proactive in ensuring recordal of the assignment and should never simply rely on the assignor record the assignment.
The Trade Marks Act provides for an application to be made to record the assignment conjointly by the assignee and the assignor or in the alternative the assignee can make the application solely.
An application to record an assignment of a Trade Mark shall include the following:
1. The name, trade or business address and description of the assignee.
2. The full particulars of the instrument, if any, under which he claims to be entitled to the Trade Mark and a copy of the said instrument. In most cases, this will be a Deed of Assignment. The copy of the deed may be retained by the registry but will not be open to public inspection. The Deed or other instruments of the title should be in English and if it not, a verified English translation of the document should be provided.
3. A Power of Attorney, simply signed.
If you want to get detail information regarding the assignment of the Trade Marks which you can get from the Trademark Attorney Nigeria as they will provide the best legal advice in the Trade Mark laws and practice.