Assignment of a trademark refers to the process by which ownership of a registered trade mark or a trade mark in the process of registration, may be passed from one party to another. This includes adding or removing current owners.
In the buying or selling of a business, trademarks are often included when transferring ownership. Trademarks are of great value to a business, so it is best to ensure that they are properly assigned.
The Process
1. Request
A request to the Registrar to record the change of ownership must be made by either the registered trademark owner or the person that is being assigned the trade mark. These requests are completed through eServices via IP Australia. The Registrar must be notified as to whether it is a full change of ownership or a partial change of ownership.
A full assignment is where all the goods and services in an application are transferred. A partial assignment is a transfer that limits the new owner’s right to use the mark for a type of good or service.
Note that the person to whom the trade mark is being transferred (the transferee) must be eligible to hold a trade mark. This means a legal entity such as; an individual or individuals, a company, an incorporated body, an incorporated trust, or a trustee acting on behalf of a trust.
2. Evidence
When ensuring that the request application meets the formalities and approved form outlined by IP Australia.
It is important to attach documentary evidence to support the Assignment request. At least one piece of evidence should be provided to support the request. The IP Right/s to be assigned must be included in the evidence. The most typical forms of evidence attached to applications include: Deed of Assignment, Letter of Assignment, Sales Agreement, Declaration, Certificate of Merger or Merger Document.
3. Recorded
Once the request is submitted, the final step is for the Registrar to record and publish the particulars of the assignment. The day after the Registrar records the assignment, the transferee becomes the owner of the trademark
Unregistered Trademark
An unregistered trademark is a trademark which has not officially been registered but where the goods and services have a sufficient reputation in the market; and the mark is sufficiently recognisable as the brand by consumers.
An unregistered trademark can be transferred following the same process as outlined above but with one added step. The added requirement is that the trademark must have collected goodwill.
Goodwill refers to the reputation that a brand often acquires through the use of their mark or name. Thus, being sufficiently recognisable and having a sufficient reputation. The unregistered trademark without established goodwill has no real value, thereby becoming unsaleable as it is merely considered a generic sign.
Summary
Trademarks, whether registered or unregistered, can be transferred to another legal entity via sale and can be a partial or full assignment. For the transfer to be effective, request must be submitted and attached with evidence to the Registrar to record the assignment. Request applications are completed online via IP Australia’s website.
If you need any assistance, our trademark lawyers are here to help. You can call us on 1300 337 997 or complete the form on this page.
Phil is a director at OpenLegal. He has over 16 years experience working in private practice and in-house counsel in Sydney and London, giving him expertise in employment law, IP, finance, leases, dispute resolution, insurance and contracts.
Raymond is a legal intern at OpenLegal, working with our legal content team. He is currently a penultimate student at the University of Technology Sydney, studying a Juris Doctor degree with an undergraduate Bachelor of Global Studies. He is particularly interested in Intellectual Property law and the increasing internationalisation of that area of business.
