Area of Law: Intellectual Property
Answer # 311
Assigning or licensing a TrademarkRegion: Ontario Answer # 311
The process of assigning or licensing a trademark is usually very complicated. To make sure that your rights are protected, you should contact a trademark lawyer to advise you about assigning or licensing your trademark. You should also have your lawyer review the agreement before you sign it. Assigning and licensing are two different ways that individuals or companies can profit from their trademarks.
An assignment is the sale of your ownership in a trademark. Assignments should be made in writing. You should register any change in the ownership of your trademark with the Office of the Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO) and you must pay a prescribed fee.
Licensing gives someone other than the owner a temporary right to use the trademark while the owner maintains ownership in the mark. In most cases, the owner of a trademark will charge a fee or a royalty for granting someone a licence to use the trademark. If you are involved in a licensing arrangement, you should make sure that the agreement is in writing and that it includes the time limits of the licence and the fee to be paid.
For more information and current government fees, refer to the Canadian Intellectual Property Office.
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