Skip to content

What Does ‘Assignment of a Trade Mark’ Mean?

Assignment of a trade mark is a commonly used phrase in intellectual property law. But what does it actually mean? In short, assigning a trade mark means transferring ownership from one party to another. Assignment is then a voluntary act and differs from a transmission of a trade mark which operates by law (i.e. upon the trade mark owner’s death).

You can assign your trade mark to anyone provided that the assignee is:

  • A separate legal entity,
  • Can hold property, and
  • Can acquire ownership in a mark.

In particular, the trade marks Registrar does not have any discretion with regards to the recording of assigned marks. Provided the assignee meets the procedural requirements and advises the Registrar of the change in ownership, he or she is bound to record the same on the register.

Full vs Partial Assignment

Trade marks are registered under classes of goods and/or services. There are forty-five classes in total. Classes one to thirty-four cover goods, while classes thirty-five to forty-five cover services.

So why is this important? Trade marks can be assigned in whole or in part. A full transfer occurs when a trade mark’s owner assigns the ownership contained in all of the goods and/or services claimed by the mark. Comparatively, a partial assignment is effected when the trade mark’s existing owner elects to transfer the trade mark to a new owner with respect to only some of the goods and/or services. It is possible to achieve a partial transfer by either:

  • transferring one or more whole classes of goods and/or services (in a multi-class application); or
  • transferring some of the items of goods and/or services claimed under one or more classes.

Under a partial assignment, any limitations that applied to the original trade mark application will also apply to the assigned trade mark.

Assignment of Certification Trade Marks

The assignment of a certification trade mark carries additional requirements. If the certification mark is the subject of an application for registration but has not yet been examined, its assignment may proceed as normal. However, if the certification mark has already been sent to the Australian Competition and Consumer Commission (ACCC), the assignment will not be recorded without the written consent of the ACCC.

Continue reading this article below the form
Loading form

Claimed Interests

A third party can object to the recording of an assignment if he or she claims an interest in the assigned trade mark. To do so, they must first obtain a court order halting the transfer process until the action is finalised.

Conclusion

If you would like to know more about the assignment of trade marks, please get in touch on 1300 544 755. LegalVision’s experienced trade mark lawyers would be delighted to answer any questions and assist you.

Register for our free webinars

ACCC Merger Reforms: Key Takeaways for Executives and Legal Counsel

Online
Understand how the ACCC’s merger reforms impact your legal strategy. Register for our free webinar.
Register Now

Ask an Employment Lawyer: Contracts, Performance and Navigating Dismissals

Online
Ask an employment lawyer your contract, performance and dismissal questions in our free webinar. Register today.
Register Now

Stop Chasing Unpaid Invoices: Payment Terms That Actually Work

Online
Stop chasing late payments with stronger terms and protections. Register for our free webinar.
Register Now

Managing Psychosocial Risks: Employer and Legal Counsel Responsibilities

Online
Protect your business by managing workplace psychosocial risks. Register for our free webinar.
Register Now
See more webinars >
Vanja Simic

Vanja Simic

Read all articles by Vanja

About LegalVision

LegalVision is an innovative commercial law firm that provides businesses with affordable, unlimited and ongoing legal assistance through our membership. We operate in Australia, the United Kingdom and New Zealand.

Learn more

We’re an award-winning law firm

  • Award

    2025 Future of Legal Services Innovation Finalist - Legal Innovation Awards

  • Award

    2025 Employer of Choice - Australasian Lawyer

  • Award

    2024 Law Company of the Year Finalist - The Lawyer Awards

  • Award

    2024 Law Firm of the Year Finalist - Modern Law Private Client Awards

  • Award

    2022 Law Firm of the Year - Australasian Law Awards