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.

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.

Vanja Simic

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