The State recognizes that an effective intellectual includes the facilitation of the transfer of technology.1 Trademark transfer is essentially the process of transferring ownership or rights to a trademark from one owner to another. This process is important for maintaining the value and integrity of the trademark while ensuring its proper use under new ownership.
Are you thinking of transferring your trademark? This article enumerates the legal requirements that you need to comply with.
Transferring Trademark: Nature and Definition
Under the Intellectual Property Code of the Philippines (IP Code), the term “technology transfer arrangements” refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights. (omission supplied).2
Agreements that (1) involve the transfer of systematic knowledge and (2) include the transfer, assignment, or licensing of intellectual property rights are recommended to undergo review by the IPOPHL's Documentation, Information, and Technology Transfer Bureau.
3 Legal Requirements for Trademark Transfer
As a preliminary note, transferring a trademark is within the purview of the technology transfer agreement as provided by the law. Hence, complying with the legal requirements listed below is crucial to have a valid transfer of your trademark:
1. Request for preliminary review
Any party involved in a technology transfer arrangement may request a preliminary review of a draft agreement to ensure it complies with the Prohibited Clauses and Mandatory Provisions outlined in the IP Code.
Thereafter, the same parties may jointly request a certification confirming that the arrangement complies with the Prohibited Clauses and Mandatory Provisions of the IP Code.
Check out the overall process on IPOPHL’s website to know more.
2. Registration of transfer
Technology transfer arrangements including trademarks must be registered with the Intellectual Property Office (IPO). But in terms of transferring application or registration of trademarks, the same may be assigned or transferred with or without the transfer of the business using the mark.3
Note that non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer arrangement unenforceable, unless said technology transfer arrangement is approved and registered with the Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases.4
3. Record of transfer with the IPOPHL
The recordal of agreements involving the transfer of rights is essential. However, registration is no longer mandatory if the agreement complies with the requirements outlined in Sections 87 and 88 of the IP Code.
Check out the trademark license agreement recordal by the IPOPHL to be guided with the technicalities of the process.
Conclusion
Building on the premise that transferring intellectual property rights fosters a robust intellectual ecosystem, ensuring that agreements involving the transfer of systematic knowledge safeguards legal compliance while promoting fairness and transparency in business transactions.
Book a consultation with a trademark attorney to know more about transferring your trademark.
You may also email us at admin@pinollaw.com for your queries.
1 An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §2 (January 1, 1998) [hereinafter Intellectual Property Code of the Philippines]
2 Intellectual Property Code of the Philippines, §4.2
3 Intellectual Property Code of the Philippines, §149.1
4 Intellectual Property Code of the Philippines, §92
