In Short
- Transferring trade marks: Notify IP Australia for registered/pending trade marks and submit required forms and evidence for full or partial ownership transfers.
- Documentation essentials: Key documents include deeds of assignment, letters of assignment, and sales agreements, all signed by involved parties.
- Assignment vs licensing: Assignments transfer ownership permanently, while licensing grants usage rights under set conditions.
Tips for Businesses
When transferring a trade mark, ensure you have clear documentation outlining the transfer terms, signed by all parties. For international trade marks, follow country-specific procedures and engage local experts if needed. Understand the difference between assignment and licensing to align with your business goals and protect your brand effectively.
Trade marks are valuable business assets, and if you decide to transfer a trade mark, it’s crucial to navigate the process correctly to avoid future legal and business complications. This article will guide you through:
- the process of transferring a trade mark;
- essential documents required for the transfer;
- how you can transfer international trade marks; and
- the key differences between licensing and assigning a trade mark.
What Is a Trade Mark?
A trade mark is a distinctive sign that identifies your business and the goods or services you provide. A trade mark can take various forms, including:
- business and product names;
- logos or icons; and
- slogans.
Benefits of Registering a Trade Mark
Registering a trade mark is a strategic decision for your business. It offers several key benefits, such as:
- Brand recognition: A trade mark helps customers quickly identify your brand, and associate your goods or services with it.
- Reputation: As your business grows, your trade mark becomes associated with your reputation in the marketplace.
- Exclusive rights: A registered trade mark gives you the exclusive right to use it to describe specified goods and services in Australia.
- Legal protection: Registration grants you the ability to legally enforce your rights if someone infringes on your trade mark.
- Licensing: A registered trade mark can allow you to authorise others to use your trade mark through licensing agreements, while you retain ownership. This can create additional revenue streams for your business.
A registered trade mark is a valuable asset that can significantly contribute to your business’s success and longevity in the marketplace.
Continue reading this article below the formHow to Transfer a Trade Mark
Transferring a trade mark, also known as transmission or assignment, involves transferring the ownership of the trade mark from one individual or entity to another. This process is crucial whether you are:
- transferring the trade mark to a family member or a new business entity; or
- are looking to add or remove current owners.
If you own a registered (or pending) trade mark, it’s imperative to notify IP Australia once the change in ownership has been finalised. As the owner, you can transfer either partial or full ownership of the trade mark.
There is a straightforward procedure for transferring either a portion or the entirety of a trade mark. Relevant forms can be accessed online through the IP Australia website.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Documents You May Need
When transferring a trade mark, you must submit an assignment request form and supporting documents to IP Australia. These documents are crucial in evidencing the transfer of ownership:
- deeds of assignment;
- letters of assignment; and
- sales agreements.
IP Australia will review your form and supporting documents, which must:
- identify the intellectual property rights you are assigning (for a trade mark, this should include the registration number, a representation of the words or logo, and the classes the trade mark is registered in);
- specify whether there is a partial or full transfer of ownership;
- include the full name and address of the new owner(s);
- be dated, and signed by both the previous owner(s) and the new owner(s); and
- include your name or signature and your position as the current owner.
If there is more than one owner, you should include the signatures of all co-owners. If a co-owner is not part of the transaction, they must provide their consent.
Transfer of International Trade Marks
You also have the option to transfer ownership of international trade marks filed under the Madrid Protocol. When doing this, you can transfer ownership of some or all of the goods and services covered by the international registration.
Similar to Australian trade marks, ensuring that the international trade mark is transferred to an eligible entity is imperative. The new owner must fulfil the requirements for Madrid Protocol applications. In particular, the new owner must have ownership of the trade mark in the designated countries specified in your Madrid Protocol application.
The current or the new owner can initiate the process of recording the change in ownership in the International Register. The transfer request can be made using the official MM5 form. This should be directly submitted to the International Bureau along with the official fee.
The MM5 form should include:
- details of the new owners, including their commercial establishment, residence and nationality;
- confirmation that they fulfil the relevant criteria; and
- evidence of the new owner’s necessary connection with the designated regions or countries.
Transferring a national trade mark registered in a specific country outside of Australia may differ from international registrations under the Madrid Protocol. In most cases, you must engage a local associate (such as a lawyer or trade mark attorney) in the relevant country to file the transfer request directly with that country’s intellectual property office. Local associates can also help to guide you through the specific requirements and procedures of that jurisdiction, which may include:
- filling out country-specific forms;
- providing notarised documents;
- paying local fees; and
- meeting any country-specific eligibility criteria for new owners.
Assignment vs Licensing
When considering allowing others to use your trade mark, it is crucial to understand the difference between assignment and licensing.
Assignment is the process of transferring ownership of your trade mark to a new owner. Through assignment, the trade mark becomes the personal property of the new owner. They can then use the mark to distinguish their goods and services. It is important to note that once you transfer ownership, you no longer have legal rights to use the trade mark.
On the other hand, licensing grants another party the right to use and exploit your trade mark based on mutually agreed conditions. With licensing, you retain ownership of the trade mark while granting permission to another business or individual to use it. This arrangement is typically formalised through an IP License Agreement.
The key distinctions are ownership and control. Assignment permanently transfers ownership rights to the new owner, while licensing allows you to maintain ownership and set specific terms for use.
Key Takeaways
As a valuable commercial asset, it is essential to ensure proper transfer of your trade mark. For registered or pending trade marks, you must notify IP Australia of any change in ownership. Make sure that you have all the relevant information and documentation in place. While you can also transfer unregistered trade marks, there is no requirement to notify IP Australia in these cases. Understanding the differences between assignment and licensing and the specific requirements for international and foreign national trade marks will help you effectively manage and protect your brand assets.
If you would like assistance in transferring a trade mark, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Yes, as the registered owner of a trade mark, you can transfer either partial or full ownership of your trade mark. This allows you to retain certain rights while transferring others, depending on your business needs.
You must submit an assignment request form to IP Australia, along with supporting documents. These can include a deed of assignment, a letter of assignment, or a sales agreement. These documents should clearly outline the transfer terms and be signed by all parties involved.
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