Trademarks are signs which are used to distinguish your goods and services from those of others, within the course of trade. Trademarks include logos, brand names, symbols and slogans.

Most businesses have at least one trademark. Registering your trademarks may give you increased rights to use the trademark, including to defend it, and to assign it. For more information on the benefits of registration please see: https://legalvision.com.au/what-is-a-trademark-and-why-register/

The owner of a registered trademark has the exclusive right to use that trademark in relation to the specific categories to which it is registered, under the Trade Marks Act 1995. This means that you can build value in the trade mark, then assign (sell) or license a third party to use the trademark. You can also assign or license all or part of the goods and services that the trademark represents.

How do I assign my trademark?

You must notify the Registrar of Trade Marks in writing of the proposed assignment through completing an “Application to record assignment or transmission of a trademark” form. This form must be accompanied by one of two documents:

  1. A letter from the previous owner requesting the assignment of the trademark to the new owner.
  2. Any other document that proof of title to the trademark eg. Deed of Assignment, Merger Document, Witnessed Declaration or probate document

It is useful to note that if more than one person owns the trademark, the signature of all owners must be included in the transfer document.

Once the assignment has been successfully carried out, a letter will be served on the applicant.

Conclusion

While assigning a trademark can be a fairly simply process, it is a good idea to speak to a trademark specialist or an intellectual property lawyer, to check that assigning the trademark is the best approach for your business. An alternative is to license the trademark for others to use. This means that others can use the trademark, but you still retain ownership.

For more information on trademarks that may be useful to you please see: http://www.ipaustralia.gov.au/

Ursula Hogben

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