5 Questions to Ask about Assigning a Trade Mark

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Table of Contents

• 1. What is the Trade Mark?
• 2. In What Field of Business?
• 3. Is the Trade Mark Registered?
• 4. In What Geographic Area?
• 5. What are the Formality Requirements?

If you are a trade mark owner, there may come a time when you need to transfer the trade mark to another person or business. A change of ownership of a trade mark is known as an ‘assignment’. There are specific rules regarding assignment of trade marks, so it’s important you understand them and comply. This article discusses some of the questions trade mark owners need to ask when assigning a trade mark to another person.

1. What is the Trade Mark?

It may sound obvious, but it’s important to identify clearly what the trade mark is. This applies more to trade marks that may be represented in multiple ways, or to marks that are not easily visually depicted.

2. In What Field of Business?

In some cases, a trade mark may be used in relation to a variety of goods or services. For this reason, it’s important to identify the goods or services for which the trade mark is assigned. If a trade mark is assigned to only a subset of the total goods or services for which it has been or can be used, this must be clearly expressed in the assignment agreement.

3. Is the Trade Mark Registered?

Both registered and unregistered trade marks can be assigned. However, if a trade mark is unregistered, it can only be assigned with the business’ goodwill. Under section 106(3) of the Trade Marks Act 1995, however, a trade mark that is registered or the subject of an application may be assigned with or without the goodwill of the business.

The rationale behind this seems to be that without goodwill, an unregistered trade mark is of little or no value. It is simply a sign that, in ordinary circumstances, doesn’t warrant protection (although copyright protection may apply in some cases). Once an individual or business applies for a trade mark, it has some value in that there is a public record of the trade mark’s creation, the priority date of the application and the application fees paid.

4. In What Geographic Area?

Section 106(2) of the Trade Marks Act 1995 makes it clear that a trade mark cannot be assigned partially with respect to one particular geographic area. Trade mark owners seeking to assign a trade mark for a particular area will need to consider a licence, rather than an assignment.

5. What are the Formality Requirements?

The Trade Marks Act does not list formal requirements for the assignment of a registered trade mark, but it does impose specific conditions on recording assigned trade marks. For example, the Act requires that the original applicant or owner (assignor), or the new owner (assignee) apply to have the assignment recorded. In the case of registered trade marks, the assignment has effect from the date of the application recorded of the assignment.

The Act also requires that the application for assignment be in the ‘approved form’. This can be taken to mean that the application must be on the approved IP Australia form, accompanied by evidence of the transmission of the assignment, such as an assignment agreement or letter of assignment. This evidence must:

• Show the date of the assignment;
• Include the old owner’s name and address;
• Include new owner’s name and address;
• Include the Trade Mark number being transferred
• Be signed by the old owner, listing their title and capacity (in the case of an Authorised Signatory).

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If you have any questions or require assistance with selling your trade mark, let our trade mark lawyers know on 1300 544 755.