Trade mark registration is the kind of intellectual property right that has the ability to be renewed or assigned. This means that the rights of the trade mark owner continue to operate until the registration of the trade mark is either cancelled or expires, and subsequently removed from the trade mark registry.

Assignment

One of the rights granted to a registered trade mark owner is the ability to assign or transfer the ownership of the trade mark to another legal entity (an individual or a company).

The party assigning the trade mark is known as the assignor, which will be the owner/s of the trade mark, and the party to which the trade mark is being assigned is known as the assignee.

For the assignment to be correctly processed, the request must be in writing. The authorisation of the assignment must be framed in a letter of assignment or deed of assignment that expressly states that the trade mark is being assigned, and the assignor must be a party authorised to request this. The authorisation is represented by the signature of the assignee/s contained within the letter of assignment or deed of assignment.

The effect of assigning a trade mark is that the owner of the trade mark will no longer have the exclusive right to use the trade mark, or authorise the use of the trade mark, or to seek relief under the Trade Marks Act if the trade mark were being infringed; these rights would move to the new owner/s that the trade mark is being assigned too.

Cancellation

The cancellation of a trade mark results in the cessation of the registration and the removal of the trade mark from the registry. The request to cancel the registration of a trade mark is given by the trade mark owner in writing, and done voluntarily.

There are a number of circumstances under which the registered trade mark owner might want to cancel the registration of the trade mark. These circumstance may include:

  • Where the trade mark has been raised as a conflict against an application for registration of another trade mark;
  • The owner of the trade mark no longer has an interest in the trade mark; or
  • To avoid the expense of an action being brought for non-use or rectification.

The effect of cancellation has the same outcome that occurs with an assignment; the trade mark owner no longer has the exclusive right to use or authorise the use of the trade mark, nor the legal right to seek relief in the event that the trade mark is infringed.

Renewal

Registration for a trade mark can be renewed every ten years from the original filing date of the application for registration.   There is no limit to the number of times that the trade mark can be renewed, and any person can renew the trade mark as long as the renewal is made in the approved form, with payment of the correct fee.

The failure to renew a trade mark will lead to the trade mark registration expiring and the trade mark being removed from the register for non-payment.

Expiration

The initial date that a trade mark registration will expire is ten years from the original filing date of the application for registration. IP Australia will send out a reminder notice two months prior to the date of expiry if the renewal fee has not been paid.

The reminder notice will outline that there may be late fees payable if the renewal fee is not paid by the due date, also outlined in the notice. The reminder notice will also inform that the trade mark registration may be renewed within a six month period after the registration due date, but, as stated, late fees may also be payable on top of renewal fees.

The six-month grace period that is granted to trade mark registration is not extendable and if the trade mark owner fails to make payment of the renewal fee before the registration due date or within the six month grace period, then the trade mark will be removed from the register for non-payment.

Conclusion

If you need assistance with trade mark registration, get in touch with our trade mark registration team here at LegalVision. Call us on 1300 544 755 and we will do our best to assist!

Daniel Smith

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