Assignment Agreement and Licensing Agreement

Apr 25, 2023 | English Blog

 Posted by: Francisco Alvarado | Associate at Alvarado y Asociados.

The right to a trademark registered or in process of registration may be transferred regularly among living parties or by succession. The transfer must be in writing and for it to take effect against third parties, it must be registered with the Registry.

The License of use of trademark allows the person who signs the contract to make use of the brand. The owner may license the use of the trademark, and may even, by himself, continue to use it, provided that it is not an exclusive license. On the contrary, in the assignment contract, the new owner of the property rights of the brand, trade name or Internet domain will be the assignee, so
the assignor will not be able to continue using the brand or license it to other people.

To the request of any interested person or of a competent authority and after hearing the owner of the trademark registration, the Judge may cancel the registration of a license agreement and prohibit the use of the trademark by the licensee when, by default, of adequate control by the owner, confusion, deception or harm to the public occurs or could occur, or a practice detrimental to
competition within the market is configured.