A Canadian trademark and all associated goodwill can be transferred. This is frequently accomplished – and documented – by way of a standalone trademark assignment, which can apply to just one or more Canadian trademarks, or, can affect multiple trademarks in multiple jurisdictions.
Canada outside Quebec follows the common law, and thus common law contract principles apply to trademark assignments.
There are very few formalities required for effective trademark assignments in Canada.
Assignments – requirements
Assignments of trademarks must be registered in Canada to effect a change of the register. In order to register a valid trademark assignment:
- the assignment must be in writing
- the assignment must be signed by the assignor
- the signature of the assignor must be witnessed
- the signature of the assignee is not required
- the assignment does not need to be notarized
- the government fee from January 1, 2024 is $125
- our fee to assist with the preparation of an assignment is $175+ (more on our services here)
- our fee to register an already prepared assignment is $100
It is best practice to refer to some ‘consideration’ in the trademark assignment. Nominal consideration, such as $1.00, is sufficient.
Trademark assignments are commonly made stand alone schedules to agreements of purchase and sale of businesses (especially asset sales) so that only the assignment and not the full purchase-sale needs to be registered.
To register an assignment of a Canadian trademark on the Register of Canadian trademarks it is not necessary to file the original assignment. Therefore, we do not require original assignment documents from you – a scanned version of the trademark assignment (preferably in PDF), or fax, is sufficient. In fact, all that the Canadian trademarks office requires is ‘evidence’ of the assignment, and thus even the assignment per se is not absolutely required (although best practice is to file the trademark assignment itself, rather than indirect evidence that an assignment has taken place.)
Transfers of trademarks between separate corporate entities within one corporate group should be properly documented by way of a signed assignment, and this assignment recorded on the trademark Register.
Trademark licenses do NOT need to be registered in Canada.
Many ownership and license rights can be affected in bankruptcy, with the law of the jurisdiction of the owner/debtor governing. A bankruptcy trustee may sell trademark rights to a new owners. These are usually best documented by a Bill of Sale or assignment, which is then used to support the transfer of ownership on the Canadian register of trademarks. Similarly, a license may be terminated or assigned in bankruptcy, subject to the laws governing the bankruptcy (and not Canadian trademark law).