Trademark owners usually file a recordal of change of assignment with the Trademarks, Patents and Designs Registry in Nigeria, in order to maintain current records of trademark ownership. As part of the recordal process, they need to furnish the registry with a trademark assignment agreement (sometimes called a Deed of Assignment). This article reviews 10 clauses you should consider including in your assignment agreement.
What is a Trademark Assignment Agreement
The trademark assignment agreement is a legal document used by the owner of a trademark (Assignor) to transfer ownership of the mark to a future owner (Assignee).
Drafting the Agreement
In drafting the trademark assignment, you must ensure the following:
1. Description of the Trademarks: The trademarks assignment agreement must provide a description of the trademark(s) to be assigned. For example, the agreement may state.
“WHEREAS, the Assignor is the proprietor and beneficial owner of several trademark applications in Nigeria (the Trademarks), of which particulars are set forth as follow:
| TRADEMARKS | CLASS | APPLICATION NUMBER | TERRITORY |
| Trademark A | 3 | F/TM/O/2020/XXXX | Nigeria |
| Trademark B | 5 | F/TM/O/2020/XXXX | Nigeria |
| Trademark C | 9 | F/TM/O/2020/XXXX | Nigeria |
| Trademark D | 42 | F/TM/O/2020/XXXX | Nigeria |
2. Effective Date: The assignment agreement must clearly state the date on which the transfer occurs. For example:
“This Agreement shall come into effect on the date on which this Agreement is registered by the competent authority as required by the laws of the Territory. The Parties hereto agree that this Agreement shall be submitted to the aforesaid authority in the Territory for its registrations.”
3. Identify the Trademark Owner or Assignor: The agreement must clearly state the name, business address, and provide a description of the Assignor. For example:
“ABC Limited, a corporation organized and existing under the laws of Ghana, Company #123, having its registered office at suit No. XYZ Street, Accra, Ghana (the Assignor).”
4. Identify the Future Trademark Owner or Assignee: The trademark assignment agreement must clearly state the name, business address, and provide a description of the Assignee. For example:
“DEF Limited, a corporation organized and existing under the laws of Kenya, Company #345, having its registered office at suit No. XYZ Street, Nairobi, Kenya (the Assigne.”
5. Consideration for the Assignment: The agreement should state how much consideration is being offered to the trademark owner (Assignor) as an incentive to transfer the trademarks to the Assignee. For example:
“For and in consideration of the sum of USD 2,000 (two thousand US dollars) paid by the Assignee to the Assignor (the receipt of which is hereby acknowledged), the Assignor does hereby assign to the Assignee all rights, title and interests derived from and in connection with the Trademarks in the Territory as well as good will of the business in which the Trademarks are used.”
6. Representation and Warranty of Trademark Ownership: The agreement should include any warranties or representations the trademark owner makes to the future owner (Assignor). For example:
“The Assignor represents and warrants that it is the sole proprietor of all rights, title and interests derived from and in connection with the Trademarks in Territory as well as good will of the business in which the Trademarks are use, and that the assignment of the Trademarks from the Assignor to the Assignee shall not cause any infringement of industrial property rights of any third party in the Territory.”
7. English Translation and Amendments in Writing: The trademark assignment agreement should be written in English. If the Agreement is not written in English, a detailed translation should be provided. The agreement should also state the future amendments, modification or alterations to the terms be made in writing.
8. Dispute Resolution: The agreement should clearly state how disputes and controversy or claims arising out of the agreement will be settled.
9. Geographic Scope: In addition to describing the trademarks, the agreement should provide information on the region or territory affected by the transfer of ownership.
10. Signatures from both parties: The agreement should include a section for execution. Both the Assignor and the Assignee are expected to sign the agreement.
This article was originally published on May 21, 2020 on Nigerian Law Intellectual Property Watch (NLIPW), now Nooktoria Legal Resource.
