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Intellectual Property

Change of Name – Assignment or Administration?

By March 1, 2013No Comments

My clients sometimes tell me they’ve changed the name of their company and would like to change the registration of their trade-mark to their new name.  However, clients often mistake the sale of a trade-mark with a change of name.

For example, let’s say a client is the owner of both OldCo and NewCo.  OldCo sells wool coats under the trade-mark GLOSSBOSS.  Because of manufacturing changes and internal shifts in the company, NewCo is now the seller of the coats (and records the income from these sales).  Clients will often state that the company name has changed, and ask to change the name on the registration.  However, this is not what actually occurred – the trade-mark was in fact transferred, or assigned, from OldCo to NewCo, and must be registered as such to avoid vulnerability to cancellation for non-use.  Recall that if the entity registered as the owner is not using the trade-mark for a period of 3 years, it can be cancelled through section 45 of the Trade-Marks Act (read here for more info).

A transfer or assignment with the Trade-Marks Office will be registered upon receipt of the prescribed fee (currently $100), the new name and address, and evidence of the transfer.  Clients should document the transfer of the trade-mark, even if it is as simple as a bill of sale.

A change of name can be registered only where the actual registered owner is merely changing its name administratively, or perhaps through an amalgamation (the trade-mark does not change hands).  Under section 41(1)(a) of the Act, the Trade-marks Office will record the change upon a written request showing the old name and new name.  No fee is required.

A third method is possible if the intention is to change the “user” of the trade-mark but maintain control and ownership with the original entity.  If OldCo remains intact, and there is value to OldCo continuing to be the registered owner of the trade-mark (for liability or asset protection reasons for example), a simple license agreement can be drawn up to license the use of the trade-mark to NewCo.  In this way, the trade-mark remains registered with OldCo and no changes need to be noted with the Trade-marks Office.

For more information contact me today.

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