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A trade mark is a valuable business asset. If you decide to transfer your trade mark, you should ensure you do so correctly in order to avoid issues further down the road. This article will set out:

What Is a Trade Mark?

A trade mark is a unique sign that you use to identify your business as well as the goods and services that you provide. A trade mark might be your trading name, logo, slogan, image or even sound. The most common trade marks are names and logos. Having a trade mark is beneficial for a few reasons. For example, a trade mark:

  • helps customers to identify your branding; 
  • builds your reputation in association with your branding as you continue to grow your business;
  • gives you exclusivity to use your trade mark in relation to the goods and services that you have registered under the trade mark; and
  • grants you legal protection and allows you to enforce your trade mark should someone else infringe on your intellectual property.

How to Transfer a Trade Mark 

Transferring your trade mark, also known as transmission or assignment, means you hand over your ownership of the intellectual property to another person or business. Whether you are transferring the trade mark to a family member or an entirely new business, it is vital to ensure that you correctly transfer your trade mark. You can also add and remove current owners.

If you have a registered trade mark, you will need to inform IP Australia once you have finalised the change in ownership. As a registered owner of the trade mark, you can transfer part or all of the ownership. 

For example, if you sell flowers, garden equipment and aluminium drink bottles, you can transfer part of the trade mark to allow another person or business to sell the drink bottles. You would retain the exclusive right to use the mark to sell flowers and garden equipment.

There is a simple process that you can follow to transfer a partial or full trade mark. You can find the relevant forms online via the IP Australia website. You can only transfer a trade mark to individuals and legal entities (e.g. a company, trustee or incorporated body).

Documents You May Need 

As well as filling out the assignment request form on IP Australia, you will need to attach documents to support your form. The most common documents of evidence are:

  • deeds of assignment;
  • letters of assignment; and
  • sales agreements.

Your supporting documents must be dated and signed by you (the previous owner) and the new owner. Your documents must include the intellectual property rights you are assigning, specifying whether there is a partial or full transfer of ownership. Your assignment request form should include:

  • the full name and address of the new owner;
  • your name or signature and your position as the current owner (if there is more than one owner, you should include signatures of all co-owners. If a co-owner is not part of the transaction, they must provide their consent);
  • details and numbers of the trade mark you are assigning; and
  • a clear statement that it is either a full or partial assignment.

IP Australia will review your form and supporting documents. 

Transfer of International Trade Marks 

You can also transfer the ownership of international trade marks you previously filed via the Madrid Protocol. You can apply to have part or all of the goods and services covered by international registration transferred to the new owner. Like the Australian trade mark, you must ensure that you transfer the international trade mark to an eligible holder. The new owner of the trade mark must meet the requirements for applying through the Madrid system, especially to hold the trade mark in the designated countries to which your Madrid application relates.

As the current owner, either you or the new owner may request to have the change in ownership recorded in the International Register. You can request the transfer using the official MM5 form and lodge it directly with the International Bureau. You must also pay the relevant official fee directly to the International Bureau.

The MM5 form should state:

  • the new owners and whether they fulfil the relevant criteria (i.e. details about their commercial establishment, residence and nationality); and
  • whether the new owner has the necessary connection with the designated regions or countries. 

Assignment vs Licensing

As discussed above, assignment is the process of transferring ownership of your trade mark to a new owner.

For example, this could be a: 

  • new owner that is taking over your business; or 
  • family member to which you are passing on the business. 

The trade mark becomes the personal property of the new owner, and they can use the mark to distinguish their goods and services. Once you transfer the ownership, you will no longer have any legal rights to use the trade mark.

On the other hand, a licence grants another party the right to use and exploit your trade mark based on conditions that you both have agreed. You still own the trade mark, but grant permission to another business or individual to use it. You can license your trade mark by using an IP License Agreement. 

For example, you could run a successful hardware store in NSW and decide to grant permission for another hardware store in QLD to use your trade mark. 

Key Takeaways

A trade mark is a valuable commercial asset, so it is essential to ensure that you properly transfer this asset. You need to notify IP Australia when there is a change in ownership of a registered trade mark. Make sure you have all the relevant information and documentation in place. This will assist IP Australia and ensure the smooth transfer of the trade mark. You can also transfer your unregistered trade mark, but you do not need to notify IP Australia in this instance. If you have questions about transferring a trade mark, contact LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

Can I transfer part of a trade mark?

Yes. As a registered owner of the trade mark, you can decide to transfer only part or all of the ownership. 

What documents do I need to transfer a trade mark?

You will need to fill out the assignment request form on IP Australia. You will also need to attach documents to support your form, such as a deed of assignment, a letter of assignment or a sale agreement.

What is the difference between assigning and licencing a trademark?

When you assign a trade mark, it becomes the personal property of the new owner. You no longer have any legal rights over it. On the other hand, a license grants another party the right to use and exploit your trade mark based on conditions that you both have agreed. You still own the trade mark.

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