When trade marks change hands – what you need to know
Protected trade marks can be used indefinitely. Sometimes they change hands in the process. We explain how a trade mark becomes a commodity and what you need to bear in mind when transferring a trade mark.
If the trade mark is transferred, the new owner should bear a few points in mind. Copyright: iStock
The IPI examines numerous trade mark applications every year. There are currently thousands of registered trade marks in Switzerland, making it the most popular intellectual property (IP) right here. For various reasons, some trade marks end up with new owners.
Use the transferred trade mark as registered
Registered IP rights, including patents, designs and trade marks, are generally transferable by contract or inheritance. “Transfers between two companies are what we see most at the IPI,” says IPI trade mark expert Xenia Abdin. Transfers can relate to all goods and services for which the trade mark is registered, but partial transfers are also possible. It’s important to have a clear, well-formulated contract to avoid legal disputes. If an IP right has been pledged, the pledge will remain in place even if the right is transferred. As a rule, the pledge is transferred to the IP right’s new owner, unless the pledge or transfer agreement states otherwise.
Update the register after the transfer
The new owner needs to have the trade mark register updated to ensure ownership is clear. You can look in the Swiss trade mark register to check who owns a trade mark. When a trade mark is sold, it’s up to the new owner to have the entry updated at the IPI. This is free of charge and ensures transparency towards third parties. Only the information reported to the IPI is entered in the register. If a trade mark is transferred by contract but no application for registration in the trade mark register is submitted to the IPI, the new owner won’t be visible there. It may be advisable to seek legal advice to ensure that the process runs smoothly (see ‘Trade mark consultants’ below).
If the trade mark is transferred, the new owner should bear a few points in mind. Copyright: iStock
Don’t forget to renew your trade mark
“As well as registering your trade mark, you also need to ensure you don’t miss any deadlines,” says the trade mark expert. If you acquire a trade mark, you should check immediately when the next renewal fee is due (every ten years). You can file an application for renewal with the IPI as early as 12 months before your trade mark’s protection expires. Once you’ve paid the renewal fee, your trade mark will stay protected for ten years. Don’t miss the deadline, or you could lose your IP right. If you’re not sure when the next fee is due, you can contact the IPI.
Be careful when dealing with international trade marks, as additional steps may be necessary. It’s important to find out about any transfer costs: see ownership change via WIPO. The IPI can also provide further information on this.
Your trade mark is a recognisable symbol for your own goods and services. Trade mark protection doesn’t just fend off free riders. Once registered, you can extend your trade mark’s validity every ten years, so that, ideally, it will become a unique recognisable feature over generations. If you take a look at big names in Switzerland and worldwide from all kinds of sectors, you’ll see that this lifelong approach makes sense for trade marks. They grow with the company and can gain in value.
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