Trade marks can range from logos to slogans to even scents or colours. They are an important part of your brand identity, distinguishing your goods and services from others in your particular field or industry. Having a registered trade mark also gives you increased rights to use the trade mark(s), including the right to exclusive use and to assign ownership of it. This article will explain the trade mark assignment process.
Can I Assign My Trade Mark?
If you are the owner of a registered trade mark, you have the exclusive right to use it. This right applies only to the specific classes of goods and/or services you registered it for.
Whether or not you can transfer or assign ownership of a registered trade mark to another party depends on the existence of a ‘legal personality’. This means that the owner must be either an individual or a company. On the other hand, a business name, trading name, or trust cannot own a trade mark.
When Would I Want to Assign My Trade Mark?
The most likely situation in which you would assign your trade mark is when you are selling your business and, hence, its intellectual property.
However, there may be a situation where you, a business owner, have registered your trade mark yourself and thus are the registered owner. However, your company is the entity/organisation that uses the trademark. In these situations, we highly recommend assigning ownership of the trade mark to the company to avoid another party attempting to argue that the registered owner is not using the trade mark.
In the above example, the other party could apply to have the trade mark removed for non-use, and you would then need to oppose their application to remove your trade mark. This can be a stressful complication that is easily avoidable and should be avoided where possible.
Continue reading this article below the formHow Do I Assign My Trade Mark?
To assign a trade mark, you must first decide what type of assignment you will undertake, either full or partial assignment. Full assignment will result in a total transfer of ownership to the new owner. On the other hand, partial assignment will prompt new applications or registrations to be created for the same representation of the trade mark, but with the new owner/s listed only on the classes of goods or services assigned to them.
Afterward, notify the Registrar of Trade Marks in writing about the proposed assignment. This can be done by completing the relevant form, which is an application to record the assignment or transmission of a trade mark. There are different forms depending on whether you undertake a partial or full assignment. You must also ensure the form is accompanied by either:
- a letter from you requesting the assignment of the trade mark to the new owner; and/or
- any other document reflecting proof of title to the trade mark (such as a Deed of Assignment or Merger Document).
Crucially, if more than one person owns the trademark, you must include the signatures of all owners in the transfer document. The applicant will receive a letter once the assignment has been successfully carried out.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
There are times when you may look to transfer your ownership rights as a trademark owner. If so, you should consider:
- whether you fulfil the ‘legal personality’ ownership requirement;
- why you are looking to assign the trade mark; and
- The necessary steps to complete a full or partial assignment.
If you need help assigning your trade mark, our experienced trade mark lawyers can assist 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
As a company, you have a ‘legal personality’, which qualifies you to assign the trade mark to another party. However, entities such as trusts or business names are not legal entities and thus cannot own trade marks or assign them.
Yes, you can do it via partial assignment. With partial assignment, there will be new trade mark registrations for the same mark. However, a different owner will be named for whichever class of goods or services you choose to assign.
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