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Trademark Assignment for Germany

Trademark Assignment Template for Germany

A German law-governed Trademark Assignment Agreement is a legal document that facilitates the transfer of trademark rights from one party (the Assignor) to another (the Assignee). The agreement complies with the German Trademark Act (MarkenG) and German Civil Code (BGB) requirements, ensuring the effective transfer of all rights, title, and interest in the trademark(s). The document includes detailed provisions for the assignment of the trademark(s), associated goodwill, warranties of ownership and validity, and obligations for registration of the transfer with relevant trademark offices. It addresses specific German legal requirements for trademark transfers while providing comprehensive protection for both parties in the transaction.

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What is a Trademark Assignment?

A Trademark Assignment is essential when transferring ownership of trademark rights in Germany, whether as part of a larger corporate transaction or as a standalone transfer. This document, governed by German law, particularly the MarkenG (German Trademark Act) and BGB (German Civil Code), ensures the legal and effective transfer of trademark rights from the Assignor to the Assignee. It is commonly used in business sales, corporate restructuring, brand acquisitions, or portfolio management. The agreement must meet specific German legal requirements for trademark transfers, including proper identification of the marks, clear transfer provisions, and necessary execution formalities. It typically includes provisions for the transfer of associated goodwill, representations about the trademark's validity and ownership, and obligations regarding the recording of the transfer with the German Patent and Trademark Office (DPMA) and other relevant registries.

What sections should be included in a Trademark Assignment?

1. Parties: Identification of the Assignor and Assignee with full legal names, registration details, and addresses

2. Background: Context of the assignment, including current ownership and registration status of the trademark(s)

3. Definitions: Key terms used in the agreement, including 'Trademark(s)', 'Effective Date', 'Associated Rights', and 'Territory'

4. Assignment: Core provision transferring all rights, title, and interest in the trademark(s) from Assignor to Assignee

5. Consideration: Details of the payment or other consideration for the assignment

6. Delivery of Documentation: Requirements for transferring trademark certificates, records, and other relevant documentation

7. Representations and Warranties: Assignor's warranties regarding ownership, validity, and absence of encumbrances

8. Further Assurances: Obligations to execute additional documents and assist with trademark office recordals

9. Governing Law: Specification of German law as governing law and jurisdiction provisions

10. Execution: Signature blocks and execution requirements under German law

What sections are optional to include in a Trademark Assignment?

1. Goodwill: Specific provisions regarding the transfer of associated goodwill, used when the trademark has significant market presence

2. Transitional Provisions: Included when the Assignor needs temporary continued use of the trademark

3. Tax Provisions: Specific tax-related provisions, included for high-value assignments or international transfers

4. Confidentiality: Provisions for keeping the assignment terms confidential, used in sensitive commercial situations

5. Employee/Third Party Rights: Needed when employees or third parties may have claims to the trademark

6. Registration Proceedings: Include when there are ongoing trademark office proceedings or oppositions

7. Associated IP Rights: Used when related IP rights (e.g., designs, domain names) are also being transferred

What schedules should be included in a Trademark Assignment?

1. Schedule 1 - Trademark Details: Comprehensive list of trademarks being assigned, including registration numbers, classes, and territories

2. Schedule 2 - Associated Rights: List of associated rights, such as domain names, social media accounts, or related IP rights

3. Schedule 3 - Existing Agreements: List of relevant licenses, coexistence agreements, or other contracts affecting the trademark(s)

4. Appendix A - Form of Recordal Applications: Template documents for recording the assignment at trademark offices

5. Appendix B - Power of Attorney: Required forms for executing trademark office proceedings on behalf of the parties

Authors

Alex Denne

Head of Growth (Open Source Law) @ Ƶ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

Germany

Publisher

Ƶ

Cost

Free to use
Relevant legal definitions



































Clauses






























Relevant Industries

Technology

Consumer Goods

Retail

Manufacturing

Pharmaceuticals

Fashion and Luxury

Food and Beverage

Entertainment

Media

Professional Services

Healthcare

Automotive

Financial Services

Telecommunications

Relevant Teams

Legal

Intellectual Property

Corporate Affairs

Brand Management

Marketing

Business Development

Mergers & Acquisitions

Commercial

Compliance

Risk Management

Relevant Roles

General Counsel

Intellectual Property Counsel

Legal Director

Corporate Lawyer

Trademark Attorney

Brand Manager

Chief Legal Officer

Licensing Manager

Legal Operations Manager

Company Secretary

Intellectual Property Manager

Commercial Director

Chief Executive Officer

Business Development Manager

Mergers & Acquisitions Director

Industries






Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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