You Registered a Trade Mark Personally. Does Your Company Own It?

When you first start a business, registering a trade mark in your own name might seem like the obvious choice. It's your idea, your business and you're the one getting everything off the ground.

But a few years later, that small venture might have grown into a limited company, with employees, customers and a brand that's become increasingly valuable.

The trade mark, however, might still be registered in your personal name.

So, does your company actually own the brand it's been building? And if not, what should you do about it?

Does Your Company Automatically Own a Trade Mark You Registered Personally?

No. Incorporating a limited company doesn't automatically transfer a trade mark you registered personally into the company's ownership.

Under UK law, a limited company is a separate legal entity from its founders, directors and shareholders. This means property you own personally doesn't automatically become company property simply because you've incorporated a business.

The same applies even if you're the company's sole director and shareholder.

Say you started a small skincare business and registered its name as a trade mark. A couple of years later, you establish a limited company to run the business.

Although the company now handles sales, employs staff and markets the products, the registered trade mark may still belong to you personally.

You can check who is listed as the registered owner using the UK Intellectual Property Office's trade mark search.

It's also worth reviewing any existing agreements, particularly if you've brought on co-founders or investors. While the register is an important starting point, previous assignments, contractual obligations and other rights associated with the brand may also affect the legal position.

Why Does Trade Mark Ownership Matter as Your Business Grows?

If you're still running the company yourself, you might wonder whether the distinction really matters. After all, you're making the decisions about the business and its brand.

Personal ownership might not cause any immediate difficulties. However, the situation can become more complicated as the business grows and other people become involved.

For instance, if you're raising an investment, potential investors may want to establish whether the company owns or has sufficient legal rights to its intellectual property. If the trade mark belongs to you personally, they might ask for it to be transferred or for an appropriate licensing arrangement to be put in place.

Selling the company can raise similar questions. If someone buys your shares in a limited company, they're acquiring those shares, not the assets you own separately. Your personally owned trade mark therefore won't automatically become company property as part of that share sale.

The position can be different when business assets are being sold, as the sale agreement and applicable legal rules determine which rights are included.

Problems can also arise if you leave the company or become involved in a shareholder dispute. The business may have spent years building recognition around the brand, while the registered trade mark remains in your name.

That doesn't necessarily mean the company has no rights to use the brand. Existing agreements, permission to use the mark and unregistered rights associated with the business's goodwill may also be relevant.

However, when ownership and usage arrangements haven't been properly documented, establishing each party's rights can become more difficult.

Can Your Company Use a Trade Mark You Own Personally?

Yes, potentially. Your company doesn't necessarily need to own a registered trade mark to use it.

A founder can retain personal ownership while granting the company permission to use the brand. One way to formalise this arrangement is through a trade mark licence agreement.

A licence can establish how the company is permitted to use the trade mark, whether that permission is exclusive, any relevant controls over its use and what happens if the arrangement ends.

This can be particularly important if the founder eventually leaves the business. Without clear terms, disagreements might arise over whether the company can continue using the brand or who has authority to make decisions about it.

An informal arrangement isn't automatically unlawful, but it may leave more room for uncertainty about what was agreed.

For some businesses, keeping the trade mark personally owned and licensing it to the company may be appropriate. For others, transferring ownership to the company may better reflect how the business operates.

The key is ensuring the legal arrangement matches what the founder and company actually intend.

How Can You Transfer Your Trade Mark to the Company?

If you want your company to own the trade mark outright, you can generally transfer it through a trade mark assignment.

Under section 24 of the Trade Marks Act 1994, an assignment of a registered trade mark must be in writing and signed by or on behalf of the person transferring it.

For a founder transferring a trade mark to their company, this would usually involve preparing an assignment agreement identifying both parties and the trade mark being transferred.

The agreement should make clear which rights are being assigned and when the transfer takes effect. Depending on the circumstances, it may also need to address consideration, existing licences, associated goodwill and other relevant terms.

Before proceeding, it's worth checking whether any shareholder, investment or intellectual property agreements already contain obligations relating to the trade mark. There may also be tax or accounting implications requiring separate professional advice.

Once the assignment is completed, the ownership change should be recorded with the UK Intellectual Property Office, generally using form TM16 for a full transfer. Pending trade mark applications can also be assigned.

Recording the transfer is separate from legally assigning the trade mark. It is also important because failing to record an assignment can affect the new owner's position against certain third parties and their ability to recover remedies for infringement during the unrecorded period.

For more information on the process, see our guide on How to Transfer a Trade Mark.

What About Other Brand Assets You Registered Personally?

Your trade mark might not be the only business asset that's still owned or registered in your personal name.

When you're first getting started, you might purchase a domain name, commission a logo or create marketing materials before establishing a limited company.

However, transferring a registered trade mark doesn't automatically transfer ownership of these other assets.

For example, if a designer created your logo, paying for the work doesn't necessarily mean you own its copyright. That will generally depend on who created it and whether the relevant rights were assigned.

Similarly, domain names and other brand-related assets may be subject to separate ownership or contractual arrangements.

As your company grows, it's worth checking that it has the appropriate legal rights to the intellectual property it relies on, rather than assuming everything associated with the brand belongs to the company.

Key Takeaways

A decision you made when your business was just getting started might not reflect how it operates today.

Registering a trade mark personally isn't necessarily a problem, and it doesn't automatically mean your company can't use the brand. However, personal ownership and company ownership are legally different, even when you're the sole shareholder.

As your business grows, it's worth checking who owns the trade mark, whether the company has the appropriate rights to use it and whether those arrangements still make sense.

Depending on your circumstances, that might involve transferring the trade mark to the company or putting a formal licensing arrangement in place.

If you're unsure who legally owns your business's trade mark, get in touch with Sprintlaw to discuss your options.