Assignment of a trade mark takes place when the owner of a registered trademark passes the ownership to another person or legal entity. Below, we set out when and how you can assign a trade mark.

What is an Assignment of a Trade Mark?

The Trade Marks Office records assignments of title, and so the Registrar must be notified of the change of ownership as soon as practicable. Ownership can also change through transmission, which happens either by:

  • Operation of law, or
  • Devolution on the personal representative of a deceased person.

It differs from an assignment that takes place by an act of the parties.Transmission also differs from an assignment because the trademark’s owner is changing their name, but they are remaining the same legal entity.

The current owner (the assignor) passes the title of the trade mark to the new owner (assignee). The assignment may change the trademark’s ownership in whole, or in part. In practice, this could mean that the assignee owns the trade mark for particular classes of goods and services. The assignor still owns the trade mark for the remaining goods and services.

You cannot assign a trade mark to use in a particular area.

When Can You Assign a Trade Mark?

You can assign a trademark during the application process as well as after registration. Whether the trade mark is registered or unregistered, the assignor or the assignee will have to notify the Registrar by lodging a form to record the transfer of ownership, or the trademark’s transmission.

How do you File an Application For Transfer of Ownership?

You file an application by lodging the form with the Registrar, together with supporting evidence showing that the trademark’s ownership has passed from the original owner to the new owner, either by assignment or transmission.

Only after the Registrar receives the form with the evidence, and records the assignment or transmission, will the assignee be considered the trademark’s owner. If the trade mark isn’t registered, the assignee will be taken to be the applicant for the registration of the trade mark.

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.

If it is only a partial assignment or transmission, then a new application or registration of the trade mark is created for the partially assigned goods or services, and the assignee is the owner of the new trade mark.

What Happens After a Trade Mark is Assigned or Transmitted?

Finally, IP Australia publishes the details of the assignment or transmission in the Official Journal of Trade Marks. The Registrar is also obliged to notify any person recorded as claiming an interest in the trade mark.

Questions? Get in touch with LegalVision’s Trade mark lawyers on 1300 544 755.

Dhanu Eliezer

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