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Corporate reorganizations and transactions frequently result in changes to trademark ownership. However, the need to formally record those changes with trademark offices is often overlooked. What may appear to be a straightforward administrative step can, in practice, become a time-consuming, multi-jurisdictional exercise with important legal and commercial implications.
In this article, we explain when recordals are required, why they matter and how trademark owners can approach the process efficiently.
When is a recordal required?
Recordals should be considered whenever there is a change in the legal entity that owns a trademark filing (i.e., either a pending application or a granted registration). Such changes include:
- Assignments or mergers involving third parties;
- Name changes;
- Transfers between affiliated entities; and
- Internal reorganizations.
Importantly (and somewhat counterintuitively), a change in ownership may occur even where the company name remains the same. For example, as part of an internal reorganization, a newly incorporated affiliate entity may acquire ownership of a trademark portfolio while the business name under which it operates remains the same. Trademark ownership should therefore be determined by reference to the actual legal entity (often best identified by its incorporation or business number), as opposed to the given name under which it conducts business.
Why do recordals matter?
Because recordals do not always have immediate consequences, they are sometimes deferred or overlooked following a corporate change, particularly where the change is the result of a transfer between affiliated entities or an internal reorganization. However, inaccurate ownership records can create complications at precisely the moment when certainty is most needed; in the course of attempting to enforce one’s rights, for example, or in the midst of a subsequent transaction.
In the context of opposition proceedings, cancellation proceedings, or litigation proceedings, unclear ownership can create evidentiary obstacles. Where a corporate change occurred years earlier, it may be difficult to locate or reconstruct the documentation required to establish ownership and update the chain of title. In addition, the time required to record the corporate change (up to several months in some jurisdictions) may significantly delay time-sensitive enforcement efforts.
Outdated ownership records, often identified during due diligence, can also create friction in commercial transactions, resulting in delays at critical stages of a deal.
What does the process entail?
In some jurisdictions (including many common law jurisdictions), recordals can often be completed within a few days through relatively simple filings at a modest cost. In other jurisdictions, however, the process can take several months and may require notarized and legalized assignments, certified translations and powers of attorney from both the assignor and the assignee.
Where a change in ownership follows a transaction, trademark owners should also be aware that cooperation from the transferring entity may be required. For example, the transaction document may require the transferring entity to execute confirmatory assignment documents or provide powers of attorney upon request, reinforcing the importance of addressing these steps in a timely manner while the parties are still engaged with one another.
Conclusion and practical considerations
Addressing recordals proactively is an important part of managing trademark portfolios, helping preserve the distinctiveness and enforceability of trademark rights and ensuring that they remain assets that can be readily exploited in both enforcement and transactional contexts.
Taking a proactive approach is generally simpler and more cost-effective than correcting deficiencies later on, particularly where enforcement or transactions are involved. It is also a good practice to conduct periodic audits of trademark portfolios to ensure that ownership records remain accurate and current across relevant jurisdictions.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
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