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Trademark Assignment Agreement

Trademark Assignment Agreement Template for United Arab Emirates

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Key Requirements PROMPT example:

Trademark Assignment Agreement

"I need a Trademark Assignment Agreement to transfer my registered UAE trademark for a luxury perfume brand to a local distributor, with completion scheduled for March 2025 and payment in two installments."

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Document background
The Trademark Assignment Agreement is a crucial legal instrument used in the United Arab Emirates for transferring ownership rights of registered or pending trademarks. This document is essential when businesses want to sell their trademark rights, during mergers and acquisitions, corporate restructuring, or brand portfolio management. Governed by UAE Federal Law No. 36 of 2021 on Trademarks, the agreement must comply with specific local requirements for trademark transfers and registration with the UAE Trademark Office. The document typically includes detailed descriptions of the marks being transferred, consideration terms, warranties about trademark ownership and validity, and provisions for recording the transfer with relevant authorities. It's particularly important in the UAE's dynamic business environment, where trademark protection and brand value are critical considerations in commercial transactions.
Suggested Sections

1. Parties: Identification of the Assignor and Assignee with full legal names, addresses, and registration details if companies

2. Background: Recitals establishing Assignor's ownership of the trademark(s) and intention to transfer to Assignee

3. Definitions: Definitions of key terms used throughout the agreement, including 'Trademark(s)', 'Effective Date', 'Territory', and 'Associated Rights'

4. Assignment: Core provision transferring all rights, title, and interest in the trademark(s) from Assignor to Assignee

5. Consideration: Details of the payment or other consideration for the assignment

6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, no encumbrances, and validity of the trademark(s)

7. Registration and Recordal: Obligations regarding recording the assignment with the UAE Trademark Office and other relevant authorities

8. Further Assurance: Commitment to execute additional documents and take necessary steps to perfect the assignment

9. Governing Law and Jurisdiction: Specification of UAE law as governing law and designation of competent UAE courts

10. Execution: Signature blocks and execution formalities complying with UAE requirements

Optional Sections

1. Goodwill: Specific provision for transfer of associated goodwill, required if the trademark has established market presence

2. Associated Rights: Transfer of related IP rights, domain names, or social media accounts, needed if these exist

3. Taxes and Costs: Allocation of registration fees, taxes, and other costs, important for high-value transfers

4. Confidentiality: Obligations to keep assignment terms confidential, recommended for sensitive commercial transactions

5. Power of Attorney: Authorization for Assignee to act on Assignor's behalf in registration matters, useful for international assignments

6. Transitional Provisions: Arrangements for phase-out period or continued use, needed if business operations require transition time

7. Non-Competition: Restrictions on Assignor's future use of similar marks, important for protecting Assignee's interests

8. Survival: Specification of provisions that continue after completion, recommended for complex transactions

Suggested Schedules

1. Schedule 1 - Trademark Details: Comprehensive list of trademarks being assigned, including registration numbers, classes, and jurisdictions

2. Schedule 2 - Form of Recordal Applications: Template documents required for recording the assignment with the UAE Trademark Office

3. Schedule 3 - Associated Rights: Detailed list of domain names, social media accounts, and other related rights being transferred

4. Schedule 4 - Payment Schedule: If payment is in installments or subject to conditions, details of payment terms and timing

5. Appendix A - Power of Attorney: If required, properly executed power of attorney for registration purposes

6. Appendix B - Trademark Specimens: Visual representations of the trademarks being assigned

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Linkedin in social icon imageX social icon image
alex.den.21@genieai.co
Relevant Industries

Retail

Consumer Goods

Technology

Fashion and Luxury

Food and Beverage

Pharmaceuticals

Manufacturing

Professional Services

Media and Entertainment

Healthcare

Hospitality

E-commerce

Financial Services

Telecommunications

Relevant Teams

Legal

Intellectual Property

Brand Management

Commercial Operations

Corporate Affairs

Compliance

Business Development

Risk Management

Marketing

International Trade

Relevant Roles

Legal Counsel

Intellectual Property Manager

Brand Manager

Commercial Director

Chief Legal Officer

Business Development Manager

Compliance Officer

Corporate Lawyer

Trademark Attorney

General Counsel

CEO

Managing Director

IP Portfolio Manager

Commercial Operations Manager

Risk Manager

Industries
Federal Law No. 36 of 2021 on Trademarks: The primary legislation governing trademarks in the UAE, covering registration, protection, transfer, and assignment of trademark rights. This law provides the fundamental legal framework for trademark assignments and must be strictly adhered to.
Federal Law No. 18 of 1993 (Commercial Transactions Law): Governs commercial transactions in the UAE, including general principles of commercial contracts which would apply to trademark assignment agreements.
Federal Law No. 18 of 1981 (Commercial Agency Law): Relevant when the trademark assignment involves commercial agency relationships or when the assignor/assignee are commercial agents in the UAE.
Paris Convention for the Protection of Industrial Property: International treaty to which UAE is a signatory, providing fundamental principles for intellectual property protection and affecting how trademark rights are treated internationally.
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): International agreement that sets minimum standards for intellectual property regulation, including trademarks, which UAE must comply with as a WTO member.
Federal Law No. 1 of 2006 on Electronic Commerce and Transactions: Relevant if the trademark assignment agreement is to be executed electronically or includes electronic signatures.
Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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