What is a trademark assignment? – Intellectual property

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In Australia, IP Australia, an agency of the Federal Department of Industry, Innovation and Science, regulates trademarks. Therefore, if a business wishes to apply for a trademark or make changes to a pending or registered trademark, it must go through IP Australia. You must assign a trademark when ownership of a trademark is transferred to another person or entity. Below, we explain the process of assigning a trademark and the relevant considerations to take into account.

Brand Ownership and Eligibility

To be an eligible trademark owner in Australia, the owner must be:

  • an individual;

  • a company;

  • an incorporated association;

  • several of them (in case of timeshare);

  • an association without legal personality (only for a collective mark); Where

  • an organization existing by law (for example, a registered charity).

If your business plans to use the mark in an entity that you have not yet incorporated, you can still file the trademark application as an individual and then assign the mark to the new organization upon incorporation.

What is an assignment or transmission of a trademark?

Suppose your company’s experiences change within its internal structure and undergo a process of transferring rights or updating ownership. In this case, you need to consider the impact on existing trademarks and ensure that you register them under the correct owner.

This process is called “assignment” of a trademark, where ownership of a pending or registered trademark passes from one party to another. It may also involve adding or removing any current owners.

IP Australia records any assignment or change in ownership of a Trademark, and you must notify IP Australia of any changes. This ensures that assignments and transfers of securities that have been made in the market are recorded on IP Australia’s records as soon as possible. This creates records that accurately reflect the actual business situation.

The current owner (“the assignor”) passes title to the mark to the new owner (“the assignee”). Assignment may change ownership of the trademark in whole or in part. In practice, this could mean that the assignee owns the trademark for particular categories of goods and services. However, the transferor still owns the trademark for the other products and services.

When can you assign a trademark?

A trademark can be transferred from one party to another during the application process or even after a trademark has been officially registered. However, whether the mark is registered or pending, the assignor or assignee will need to notify IP Australia by filing a form to evidence the transfer of ownership.

As the business or entity filing the form, you must ensure that the business or individual to whom you are assigning the mark is eligible to own the mark, i.e. a legal person.

IP Australia asks you to attach relevant supporting documentation to support the assignment request. The necessary proofs and forms must be signed and dated by the parties (the former owner and the new owner). The most common forms of proof are to provide:

  • Stopping act ;

  • engagement letter ;

  • Sales agreement;

  • Declaration;

  • Merger certificate; Where

  • Deed of merger.

Once IP Australia receives the form with evidence and registers the assignment or transmission, the assignee will be considered the owner of the mark.

If it is a complete assignment or transmission for all the goods and services registered for the mark, the assignee is deemed to be the owner of the mark for all these goods and services. On the other hand, suppose it is only a partial assignment or transmission. In this case, IP Australia will create a new trademark application or registration for the partially transferred goods or services, and the transferee will be the owner of the new mark.

Rules for certification marks and collective marks

IP Australia has certain rules regarding trademarks registered as a certification mark or collective mark.

Certification marks

If the certification mark is the subject of a pending application for registration that has not yet been examined or is still being examined, you can assign the mark. However, if the certification mark is under review and with the ACCC for review, or if the registration of the mark has already been completed, you should consult the ACCC. Additionally, you must provide proof of their consent to the transfer of ownership before the assignment occurs.

Collective marks

You cannot assign a collective mark.

What happens after the attribution of a mark?

IP Australia publishes details of the assignment or transmission in the Official Trademarks Journal. IP Australia is required to notify any person registered as claiming an interest in the mark of any assignment.

Key points to remember

You can assign a trademark at any stage of the application process or after registration. This may vary if you registered the mark as a certification mark or a collective mark. You must also notify IP Australia of any changes to your corporate structure that may affect your brand. Providing all necessary information and dated documentation will ensure an efficient transition process for your trademark assignment.

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