Assigning a Trademark in Canada: What the Transfer Agreement Must Include

Selling a business, restructuring a corporate group, or simply transferring ownership of a brand to a new entity all usually involve a trademark assignment — the formal transfer of ownership of a trademark from one party to another. Unlike a licence, which grants permission to use a mark while the owner keeps it, an assignment moves ownership itself.

Getting the assignment agreement wrong, or skipping the paperwork entirely and relying on an informal understanding, can leave the new owner with a weaker claim to the mark than they think they have, and can create real confusion about who actually controls it going forward.

This article sets out what a properly drafted trademark assignment agreement should include, and where these transfers commonly run into trouble.

Assignment vs Licence: Know Which One You Actually Need

• An assignment transfers ownership of the trademark permanently (subject to whatever the agreement says).
• A licence lets someone else use the mark while the original owner keeps ownership.

These get confused often enough that it is worth confirming, in plain language, in the opening lines of any agreement, exactly which one you are signing.

Key Terms a Trademark Assignment Agreement Should Include

• Identification of the mark(s) — the exact word mark, design, or both, and the registration number if it is registered (or a clear description if it is an unregistered, common-law mark).
• Effective date of transfer.
• Purchase price or other consideration, and how and when it is paid.
• Scope of what's included — whether the assignment covers the mark alone or also the associated goodwill of the business, domain names, social media handles, and related marketing materials.
• Representations and warranties from the assignor — for example, that it actually owns the mark, that it is not aware of conflicting claims, and that there is no existing litigation over it.
• Assistance with recording the transfer — a commitment from the assignor to sign any further documents CIPO requires to record the new ownership.
• Indemnities addressing what happens if a third party later challenges the assignor's ownership or the validity of the mark.

Registered vs Unregistered Marks: Does the Process Change?

Recording the Assignment with CIPO

For a registered mark, the new owner should have the assignment recorded against the registration with CIPO so the public registry reflects who actually owns the mark. There is generally an administrative fee for this — check CIPO's current fee schedule, since government fees are adjusted from time to time and it is not something to guess at.

Until the assignment is recorded, the public record can still show the previous owner, which creates real practical problems if the new owner later needs to enforce the mark, license it, or sell the business again.

A Note on Separating a Mark From Its Goodwill

Trademark rights are closely tied to the goodwill and reputation the mark represents. An assignment that separates a mark from the goodwill of the business it has always identified — for example, transferring a brand name without any of the business, customers, or reputation behind it — can create legal complications and public confusion about the source of goods or services. This is an area where the specific structure of the deal matters a great deal, and it is worth getting advice before finalizing the split.

Common Problems in Trademark Assignments

• [ ] No written agreement at all — just an understanding between the parties.
• [ ] The agreement does not clearly state whether goodwill, domain names, and social media accounts are included.
• [ ] The assignment is never recorded with CIPO, leaving the registry showing the old owner.
• [ ] No representations or warranties about the assignor's actual ownership.
• [ ] The mark is assigned separately from the business's goodwill without addressing the confusion risk that can create.

Frequently asked questions