Trade Mark Transfers During Investment Rounds: Key Steps

Taking on investors can be an exciting yet complex and challenging stage in your business’ progression. Accordingly, you may occasionally need to consider how your trade mark is held and how your overall business is structured. This article will help break down when you might need to transfer or rearrange your business’s trade marks and what this process entails.

Trade Mark Essentials

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Trade Mark Basics

As a general guideline, the entity or individual that utilises a trade mark (such as your brand name and logo) should be identified as the owner if you have registered your trade mark(s). However, if your business operates under a group structure, such as: holding and operating companies, there are alternative ways to organise your assets. For instance, you may decide for your holding company to own your intellectual property, including your trade marks. Also, you may license the right to use those trade marks to your operating company.

Transferring Ownership Of Trade Marks

In the UK, transferring a trade mark from one company to another or licensing it from the owner to another entity is usually a straightforward process. However, it is crucial that this transfer or licensing is executed correctly in both situations. Otherwise, you risk your trade mark registration becoming vulnerable based on the claim that the entity listed as the owner is not using it. Having an explicit licensing agreement or ensuring that your trade mark is transferred properly will minimise this risk.

When Might You Need to Transfer Your Trade Mark?

Investors often seek assurance that you have protected your brand by registering trade marks. They may also have ideas about how your business should manage these assets. Their primary focus will typically be on ensuring the security and profitability of their investment. Thus, any trade mark transfer or licensing generally aims to minimise tax or reduce the operating liability of a company.

Key Steps in Investment Rounds

Each business will have its own unique needs when preparing to take on external investment. The information below provides a general overview of some steps you could take. Notably, you should seek legal advice to obtain specific guidance.

1. Identify What Trade Marks Your Business Owns and if You Have Sufficient Protection

Branding is essential for many businesses. Therefore, investors will want to see proactive steps being taken to secure your brand by registering your trade marks. Failing to do so could force your business to rebrand. You may have to share the market with another company that has a similar name. Be sure to consider whether you need to register your trade marks internationally as well as domestically in the UK.

2. Valuing Your Trade Marks and Due Diligence

When taking on investors, it is important to ensure that your business has been accurately valued, considering physical assets as well as any intellectual property, such as trade marks. As part of this process, ensure that your registrations are up to date. For example, ensure they still provide adequate coverage, and the owner’s name and address are correct.

3. Negotiating and Agreeing to the Terms of the Investment

Once you have evaluated your IP and confirmed that you are adequately protected and that all trade mark registrations are current, the next step is typically to negotiate and reach an agreement with your investor(s) regarding the general terms of their investment. Engaging with investors can be intricate, so be sure to contemplate what additional factors must be taken into account beyond your IP.

4. Ensuring That Any Transfers/licensing Arrangements Are Recorded Correctly

Once you have reached an agreement with your investor(s) regarding how your trade marks will be held (if different from your current holdings), the next step is to ensure that any transfers or licensing arrangements are accurately recorded in the trade marks registers (if necessary) and that you have suitable contracts in place to clarify the legal position.

Key Takeaways

During investment rounds, you may need to transfer trade marks due to company restructuring, investor requirements, or to optimise asset protection and tax efficiency, making it crucial to understand and navigate this process effectively. Proper management of trade mark transfers can significantly impact your company’s valuation, legal protection, and attractiveness to investors, underlining the importance of getting this process right. Key steps in this process include conducting a thorough trade mark audit, accurately valuing intellectual property assets, performing due diligence, negotiating transfer terms, and ensuring all changes are correctly documented and executed.

If you need help with your trade mark, our experienced IP lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 0808 196 8584 or visit our membership page. 

Frequently Asked Questions

Do I have to transfer my trade marks when taking on investors?

Not always. It depends on your business structure, investor requirements, and strategic considerations. Discuss this with potential investors and legal advisors to determine the best approach for your situation.

How long does the process of transferring a trade mark typically take?

The Intellectual Property Office in the UK usually processes a straightforward transfer in 2-4 weeks. However, the entire process can take several months, including due diligence and negotiations. Start early to avoid delaying your funding round.

What are the risks of improper trade mark transfer or documentation?

Risks include invalid transfers, vulnerability to cancellation, complications in future transactions, issues with investors, and potential tax implications. Always ensure transfers are properly executed and recorded with relevant IP offices.