Jurisdiction(s):
United Kingdom

Trade mark assignment agreements: negotiation and drafting checklist (pro-assignor/pro-assignee), covering goodwill and right to sue, EUTM/Brexit issues, territory, applications, licences, registration, fees, VAT, warranties and boilerplate

Published by a LexisNexis IP expert

Checklists

How to use this Checklist

This Checklist pinpoints common matters that arise when negotiating and drafting the following agreements:

Trade mark assignment (pro-assignor)
Trade mark assignment (pro-assignee)

For more detail on the legal basis for assigning trade marks and the formalities required, see Practice Note: Assigning intellectual property rights. It can also be repurposed as heads of terms to capture headline agreed points while a formal trade mark assignment is being finalised. For guidance on this, see Precedent: Heads of terms—commercial contracts.

Checklist schedule for proposed trade mark assignment

Checklist, further details, notes (if any)

Key commercial considerations

☐ Parties Verify which entities will be party to the agreement—specify the current owner of the trade marks (ie the assignor) and the entity to whom they will be transferred (ie the assignee). Also confirm each party’s legal status and whether any third parties (such as group affiliates) are intended to benefit under the proposed agreement.
☐ Commencement / effective date Confirm the intended commencement / effective date.

Key definitions

☐ Trade marks Specify the trade marks that the proposed assignment will cover...

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Web page updated on 20/05/2026

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