Licensing of a registered trademark

A licence to use a registered trademark may be general or limited; and it may be exclusive or non-exclusive.

The licence is binding on a successor in title to the grantor's interest, unless the licence provides otherwise. Where the licence so provides, the licensee may grant a sub-licence.

Assignment of a registered trademark

A registered trademark is transmissible by assignment, testamentary disposition or by operation of law in the same way as other personal or moveable property. A trademark registered or in application stage may be assigned both independently and as part of the transferred goodwill of a business. An assignment may be partial and limited so as to apply only to some but not all of the goods or services for which the trademark is registered; or to the use of the trademark in a particular manner or a particular locality.

Documents Required

a Deed of Assignment with the signatures thereon attested by a notary or legalised by a diplomatic or consular representative of Malta or with the Apostille according to the Hague Convention; and

a Form of Authorisation and Statement of Address for Service: This must be completed and drawn in our favour by both the assignor and the assignee, with the signatures thereon attested by a notary; otherwise, the document may be either legalised by a diplomatic or consular representative of Malta or with the Apostille according to the Hague Convention.

Specific Detail Requirements

Other details which will be required to record the assignment are:

(i) the Trademark Registration Numbers of the marks assigned and the respective Classes in which such marks are registered;

(ii) the full name, address and post-code of the assignor and of the assignee appearing on the assignment document; and

(iii) the date of the assignment, i.e. the date appearing on the assignment document.