Transfer Of Trademark Agreement Template for Hong Kong

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Key Requirements PROMPT example:

Transfer Of Trademark Agreement

"I need a Transfer of Trademark Agreement to sell my registered Hong Kong trademark 'TechGlow' to ABC Technologies Limited, with the transfer to be completed by March 1, 2025, for a one-time payment of HKD 500,000."

Document background
The Transfer of Trademark Agreement is a crucial document used when a business or individual wishes to sell or otherwise transfer ownership of their registered trademarks to another party in Hong Kong. This type of agreement is commonly used in various scenarios, including company acquisitions, brand sales, corporate restructuring, or settlement of disputes. The document must comply with Hong Kong's Trade Marks Ordinance (Cap. 559) and related regulations, ensuring proper recording of the transfer with the Hong Kong Intellectual Property Department. The agreement typically includes detailed information about the trademarks being transferred, warranties about their validity and ownership, consideration for the transfer, and mechanisms for completing the transfer. It also addresses practical aspects such as the treatment of existing licenses, ongoing use of the trademarks, and responsibilities for recordal of the transfer with relevant authorities.
Suggested Sections

1. Parties: Identifies and provides full details of the transferor (current trademark owner) and transferee (new owner)

2. Background: Establishes the context of the transfer, confirms ownership of the trademarks, and states the intention to transfer

3. Definitions: Defines key terms used throughout the agreement, including 'Trademarks', 'Effective Date', 'Intellectual Property Rights', etc.

4. Transfer: Core clause stating the absolute transfer of the trademark(s) from transferor to transferee

5. Consideration: States the payment or other consideration for the transfer

6. Completion: Specifies the effective date of transfer and completion mechanics

7. Transferor's Warranties: Warranties regarding ownership, right to transfer, validity of trademarks, and absence of encumbrances

8. Further Assurance: Obligation to execute additional documents and assist with trademark office recordals

9. Costs: Allocation of costs related to the transfer and registration

10. Governing Law and Jurisdiction: Specifies Hong Kong law as governing law and Hong Kong courts' jurisdiction

11. Execution: Signature blocks and execution formalities

Optional Sections

1. Goodwill: Include when specifically transferring associated goodwill with the trademarks

2. Existing Licenses: Include when there are existing license agreements that need to be addressed

3. Transitional Provisions: Include when the transferee needs time to update packaging, marketing materials, etc.

4. Tax Provisions: Include when specific tax arrangements need to be addressed

5. Confidentiality: Include when transfer terms need to remain confidential

6. Assignment: Include when restrictions on future transfers need to be specified

7. Related Rights: Include when transferring associated IP rights (e.g., domain names, social media accounts)

8. Ongoing Proceedings: Include when there are pending litigation or trademark office proceedings

Suggested Schedules

1. Schedule 1 - The Trademarks: Detailed list of all trademarks being transferred, including registration numbers, classes, and jurisdictions

2. Schedule 2 - Form of Recordal Applications: Templates for trademark office recordal applications

3. Schedule 3 - Existing Agreements: List of existing licenses, coexistence agreements, or other relevant agreements

4. Schedule 4 - Payment Terms: Detailed payment schedule and mechanics if payment is not made in full at completion

5. Appendix A - Power of Attorney: If required for recordal purposes

6. Appendix B - Transfer Forms: Jurisdiction-specific trademark transfer forms

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

Relevant Industries

Retail

Manufacturing

Technology

Consumer Goods

Fashion and Luxury

Food and Beverage

Pharmaceuticals

Entertainment

Media

Professional Services

E-commerce

Healthcare

Telecommunications

Software

Financial Services

Relevant Teams

Legal

Intellectual Property

Corporate Secretarial

Finance

Brand Management

Marketing

Business Development

Compliance

Commercial Operations

Relevant Roles

Chief Legal Officer

Intellectual Property Counsel

General Counsel

Legal Director

Brand Protection Manager

Trademark Attorney

Commercial Lawyer

Chief Executive Officer

Chief Financial Officer

Brand Manager

Intellectual Property Manager

Corporate Secretary

Commercial Director

Business Development Director

Licensing Manager

Industries
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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