Deed of Assignment of Trademarks in Kenya

A Deed of Assignment of trademarks in Kenya is a legal document that formalizes the transfer of ownership from one party (assignor) to another (assignee). Trademarks, encompassing logos, brand names, and distinctive symbols, serve as identifiers of a business’s goods or services. The deed acts as tangible evidence of the contractual agreement between the parties involved in the transfer, ensuring a smooth transition of trademark rights.

Legal Requirements:

For a Deed of Assignment to be valid in Kenya, certain legal requirements must be met. These include:

1. In Writing: The deed must be in writing to be legally enforceable. Verbal agreements are generally not sufficient in the context of trademark assignments.
2. Clear Identification of Trademarks: The trademarks being assigned must be identified in the deed. This includes providing detailed descriptions of the trademarks, such as logos, slogans, and any associated goodwill.
3. Consideration: The deed should specify the consideration or payment made for the transfer of trademark rights. While it may not always be monetary, the consideration could include goods, services, or any other agreed-upon form of payment.
4. Consent and Signatures: The assignment must be consensual, with both parties willingly agreeing to the transfer. The deed should include the signatures of both the assignor and assignee, signifying their acceptance of the terms.
5. Registration with the Trademarks Office (KIPI): It is mandatory to register the Deed of Assignment with the KIPI, otherwise it would not be enforceable.

Legal Implications:

The Deed of Assignment carries various legal implications, impacting both parties involved in the transfer of trademark ownership. Some key considerations include:

1. Continuity of Rights: The assignee inherits all the rights associated with the trademarks, including the right to use, license, or enforce them against potential infringers.
2. Obligations of the Assignor: The assignor typically covenants that they are the rightful owner of the trademarks and have the authority to transfer the rights. They may also undertake not to use similar marks in competition with the assignee.
3. Protection against Infringement: The assignee gains the ability to take legal action against any third parties infringing upon the assigned trademarks.
4. Goodwill Transfer: If the trademarks are associated with a certain goodwill, the Deed of Assignment ensures the transfer of this valuable intangible asset.