Introduction

A registered trademark is a valuable asset for any business, as it represents brand identity, reputation, and exclusivity. However, there are cases where a company or individual may decide to transfer the rights of a trademark to another party. This process is known as trademark assignment and must follow specific rules established by INPI (National Institute of Industrial Property) in Brazil.

Neste artigo, vamos explicar o que é a cessão de marca, quando ela pode ser feita, e o passo a passo para realizar essa transferência legalmente.

1. What Is Trademark Assignment?

Trademark assignment is the transfer of ownership of a registered trademark from one party (assignor) to another (assignee). This means that the new owner gains full rights over the trademark and can use it in commercial activities.

🔹 Examples of trademark assignment:
✅ A company sells its brand to another company.
✅ A business owner transfers their trademark when selling a business.
✅ A company restructures and moves trademarks between subsidiaries.

2. When Can a Trademark Be Assigned?

A trademark can be assigned at any stage after the registration request has been submitted to INPI. However, there are some important legal restrictions:

🚫 The new owner must operate in the same industry as the original owner.
🚫 A trademark cannot be partially assigned—the entire ownership must be transferred.
🚫 The assignment cannot create confusion in the market (e.g., if two different companies share similar trademarks).

3. How to Assign a Trademark in Brazil?

Step 1: Verify Eligibility for Assignment

Before starting the process, ensure that:

✅ The trademark is active and valid.
✅ The assignor has full rights over the trademark.
✅ The assignee (new owner) operates in a compatible business sector.

Step 2: Draft a Trademark Assignment Agreement

The assignment must be documented through a formal contract, which should include:

✅ Names and details of both parties (assignor and assignee).
✅ Trademark registration number at INPI.
✅ Terms of transfer, including the sale price (if applicable).
✅ Signatures of all parties involved.

Step 3: Submit the Assignment Request to INPI

To make the assignment official, it must be registered with INPI through the following steps:

1️⃣ Access the e-INPI system and select “Petition for Trademark Assignment.”
2️⃣ Attach the signed contract and any required legal documents.
3️⃣ Pay the official INPI fee for processing the assignment request.
4️⃣ Submit the application and wait for INPI’s approval.

Step 4: Wait for INPI’s Approval

INPI will analyze the request to ensure that the assignment follows trademark regulations. If there are no issues, the new owner’s name will be added to the trademark registration certificate.

4. What Are the Benefits of Assigning a Trademark?

🔹 For the Assignor (Current Owner):
✅ Monetizes a valuable asset, selling the trademark for a profit.
✅ Transfers legal responsibility to the new owner.
✅ Focuses on new business opportunities by letting go of old trademarks.

🔹 For the Assignee (New Owner):
✅ Acquires a brand with existing market recognition.
✅ Avoids the costs and delays of registering a new trademark from scratch.
✅ Expands business presence by integrating a well-known trademark.

Conclusion

Trademark assignment is a strategic way to transfer brand ownership legally and efficiently. Whether selling a business, restructuring a company, or acquiring an established brand, following the correct process with INPI ensures a smooth and legal transfer.

Se você deseja ceder ou adquirir uma marca registrada, consulte um especialista em propriedade intelectual para garantir que todos os aspectos legais sejam seguidos corretamente.