Mistakes to Avoid With Trade Mark Assignment

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Table of Contents

• 1. Incomplete or Incorrect Documentation
• 2. Ambiguous Language
• 3. Failure to Verify Ownership
• 4. Lack of Record with IP Australia
• 5. Lack of Due Diligence
• 6. Neglect of the Trade Mark
• 7. Lack of Written Agreement
• 8. Limited Legal Advice
• Key Takeaways

When you transfer your registered trade mark to another party, either partially or in full, you are assigning it. This happens through Australia’s trade mark authority, IP Australia. Trade mark assignment, especially when partial, can be a complex process. To ensure it occurs smoothly and effectively, it is important to avoid certain mistakes. This article will set out some common mistakes you should know and prevent when assigning your trade mark. 

1. Incomplete or Incorrect Documentation

If you fail to provide accurate and complete information in the assignment documents , this may cause delays or complications. As such, ensure that all relevant details are accurately reflected in the documentation. This may include:

• the names and addresses of both you and the assignee;
• the specific trade marks being transferred; and
• any associated goodwill (intangible assets) if relevant.  

The assignment request should be filed through IP Australia’s online services platform. Any relevant supporting documents must accompany the request, such as an intellectual property transfer agreement.

2. Ambiguous Language

Using vague or ambiguous language in the assignment documentation can be detrimental to your trade mark assignment. By communicating effectively to the other party in your assignment agreement, you can ensure that you understand:

• the specifics of what is being assigned;
• how the agreement protects your interests;
• that the agreement complies with legal requirements.

Since accurate and clear language is crucial in assignments, you may consider seeking advice from a trade mark lawyer before proceeding. They will be able to assist with drafting the assignment agreement.

3. Failure to Verify Ownership

You should not assign a trade mark without confirming that you are its current owner. Though this may seem self-explanatory, it is an important step, as only current trade mark owners have legal authority to transfer the mark.

4. Lack of Record with IP Australia

Neglecting to record the trade mark assignment with IP Australia may result in the loss of legal protections and rights associated with the transfer, potentially exposing both you and the assignee to complications and disputes. In Australia, if you have applied through online services via the ‘Change ownership’ request type, an electronic form is considered a request.

File the necessary paperwork to record the assignment with the appropriate authorities. This helps establish the assignee’s rights and provides public notice of the change in ownership.

5. Lack of Due Diligence

The trade mark being assigned may be the subject of existing disputes, ownership or legal issues. Thus, you should conduct your due diligence and investigate the status of the trade mark, ensuring there are no pending litigations, disputes, or conflicting rights. This helps prevent potential legal complications both during and post-assignment. 

6. Neglect of the Trade Mark

Failing to address the renewal and maintenance requirements may jeopardise continued trade mark protection. Although you may no longer be the owner post-assignment, it is important that you alert the assignee to the potential expiration of ownership rights generally. You should clearly explain in your assignment how they can diligently manage and fulfil all necessary obligations the transferred trade mark is valid and enforceable. 

7. Lack of Written Agreement

Relying solely on verbal agreements without a written and signed assignment agreement leaves the transfer of the trade mark legally precarious. This may lead to misunderstandings between you and the assignee. It is essential to formalise the assignment process through a comprehensive, written agreement ( deed of assignment) signed by all parties involved. This provides clarity, legal validity, and a reliable record of the transaction. In potential disputes, the written agreement will also provide evidence that the assignment occurred legally. 

8. Limited Legal Advice

Proceeding with a trade mark assignment without seeking legal advice exposes the parties involved to potential legal pitfalls and uncertainties. You should consult with a qualified intellectual property lawyer to ensure that the assignment process complies with relevant laws and regulations. Legal advice can help you navigate potential issues and safeguard your interests.

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

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Key Takeaways

Assigning partial or full ownership of your trade mark to another party can be a complex process. To avoid uncertainty and potential legal disputes, you should take steps to avoid mistakes associated with assignment. These steps include:

• provide accurate and complete information in assignment documents;
• using clear, unambiguous language in your assignment agreement; 
• confirming current ownership and legal authority before assigning a trade mark;
• recording trade mark assignments with IP Australia to maintain legal protections;
• conducting due diligence to check for existing disputes, encumbrances, or legal issues.
• addressing renewal and maintenance requirements to ensure the continued validity of the assigned trade mark;
• formalising agreements in writing and obtaining signed assignment agreements; and
• seeking legal advice before proceeding with a trade mark assignment.

If you would like assistance regarding trade mark assignment, 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.