In Short
- Assigning a trade mark involves transferring its ownership from one party to another, either fully or partially, for specific goods or services.
- IP Australia manages trade mark applications, registrations, and ownership changes in Australia.
- To complete the transfer, notify IP Australia with signed and dated documents, such as a deed of assignment or sales agreement.
Tips for Businesses
Ensure the new owner is eligible to hold the trade mark. Submit all required documents promptly to IP Australia, ensuring they are signed and dated. For unregistered trade marks, note they can only be transferred with the associated business or by registering the trade mark first.
Table of Contents
- Trade Mark Ownership & Eligibility
- What is an Assignment or Transmission of a Trade Mark?
- When Can You Assign a Trade Mark?
- Rules for Certification Trade Marks and Collective Trade Marks
- Assignment of an Unregistered Trade Mark
- What Happens After Assigning A Trade Mark?
- Key Takeaways
- Frequently Asked Questions
In Australia, IP Australia, an agency of the Federal Department of Industry, Innovation and Science, regulates trade marks. Therefore, if a business wishes to apply for a trade mark or make any changes to a pending or registered trade mark, it must go through IP Australia. You must record the assignment of a trade mark when the ownership of a trade mark passes to another person or legal entity. This article explains the process of assigning a trade mark and the relevant factors to consider.
Trade Mark Ownership & Eligibility
To be an eligible owner of a trade mark in Australia, the owner must be:
- an individual;
- a company;
- an incorporated association;
- more than one of these (in the case of multiple ownership);
- an unincorporated association (for a collective trade mark only); or
- a body existing under legislation (for example, a registered charity).
When multiple individuals jointly own a trade mark, such as in the case of a business partnership preparing to incorporate their business, specific requirements must be met. All joint trade mark owners must be included as parties in the document transferring the intellectual property rights to the newly formed company.
What is an Assignment or Transmission of a Trade Mark?
Suppose your business experiences changes within its internal structure. As such, it may be undergoing a process of transferring rights or updating ownership. In that case, you must consider this impact on existing trade marks and ensure you register them with the correct owner.
This process is called an ‘assignment’ of a trade mark, where the ownership of a pending or registered trade mark passes from one party to another. It can also involve adding or removing any current owners.
IP Australia records any assignments or changes to the ownership of a trade mark. You must notify them of any change. This ensures that assignments and transmissions of titles affected in the marketplace are entered in IP Australia’s records at the earliest opportunity. This creates records that are an accurate reflection of the real business situation.
The current owner (‘the assignor’) passes the title of the trade mark to the new owner (‘the assignee’). The assignment may change the trade mark’s ownership in whole or in part. In practice, this could mean the assignee owns the trade mark for particular goods and services. However, the assignor still owns the trade mark for the remaining goods and services.
Continue reading this article below the formWhen Can You Assign a Trade Mark?
A trade mark can be assigned from one party to another during the application process or after a trade mark has achieved formal registration. However, whether the trade mark is registered or pending, the assignor or the assignee will have to notify IP Australia by lodging a form to record the transfer of ownership.
As a business or entity lodging the form, you must ensure that the company or individual you assign the trade mark to is eligible to hold the trade mark, i.e., a legal entity.
IP Australia requires you to attach relevant documentary evidence to support the assignment request. The necessary evidence and forms must be signed and dated by the parties (the previous owner/s and the new owner/s). The most common forms of evidence include providing a:
- deed of assignment;
- letter of assignment;
- sales agreement;
- declaration;
- certificate of merger; or
- merger document.
If it is a full assignment or transmission for all goods and services registered for the trade mark, then the assignee is taken to be the owner of the trade mark for all those goods and services. On the other hand, suppose it is only a partial assignment or transmission. In that case, IP Australia will create a new application or registration of the trade mark for the partially assigned goods or services, and the assignee is the owner of the new trade mark.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Rules for Certification Trade Marks and Collective Trade Marks
IP Australia has certain rules regarding trade marks filed as certifications or collective trade marks.
Certification Trade Marks
If the certification trade mark is the subject of a current application for registration that has not yet been examined or is still under examination, you can assign the trade mark. However, if the certification trade mark is under examination and with the ACCC for review, or trade mark registration is already complete, you must consult the ACCC. Additionally, you must provide evidence of its consent to transfer ownership before the assignment occurs.
Collective Trade Marks
You cannot assign a collective trade mark.
Assignment of an Unregistered Trade Mark
Under Australian law, unregistered trade marks are not recognised as property. Instead, their value lies in the goodwill or reputation generated through use in the marketplace.
As a result, assigning an unregistered trade mark without selling the associated business is impossible. The goodwill tied to the trade mark is inseparable from the business it enhances.
However, transferring an unregistered trade mark may be possible if the new owners register the mark. In such cases, the transfer is treated as an assignment of property with a condition that the trade mark must first be registered.
Currently, there are no other legal mechanisms to transfer an unregistered trade mark without also transferring the goodwill of the associated business.
What Happens After Assigning A Trade Mark?
IP Australia publishes the details of the assignment or transmission in the Official Journal of Trade Marks. IP Australia must notify any person recorded as claiming an interest in the trade mark of any assignments.
Key Takeaways
You can assign a trade mark at any stage of the application process or post-registration. This may vary if you have filed the trade mark as a certification or collective trade mark. You must also notify IP Australia of any changes to your business structure that may affect your trade mark. Providing all the necessary information and dated documentation will ensure an efficient transition process for your trade mark assignment.
If you need help assigning your trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The assignment of a trade mark is the process of transferring ownership of a registered or pending trade mark from one party (the assignor) to another party (the assignee). Depending on the goods and services covered by the trade mark, this transfer may involve changing ownership entirely or partially.
IP Australia, an agency of the Federal Department of Industry, Innovation and Science, regulates trade marks in Australia. They handle trade mark applications, registrations, and changes to ownership.
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