Considering the assignment or transfer of your trade marks
should be on your checklist of things to do.
A common mistake made by trade mark owners during the sale or
winding up of a business is failing to realise the value of the
trade marks owned by the business and the potential need to assign
this intangible property in the same way as other tangible assets
such as plant and stock. For example, if a company is wound up
without the relevant trade marks being assigned, it can be very
difficult (sometimes impossible) and costly to rectify this.
A trade mark can be assigned in a number of ways including by
way of a sale of business contract or by way of a separate deed of
assignment. Once a trade mark(s) is assigned, it is important to
promptly record the assignment with IP Australia so that the Trade
Marks Register reflects the current owner of the trade mark(s). The
rights of a new owner will be particularly affected if infringement
proceedings are commenced as they will not be able to obtain relief
until the assignment is formally recorded with IP Australia.
Recording the assignment of a trade mark(s) is a simple process
involving the filing of an application with IP Australia together
with evidence that the title to the trade mark(s) has been assigned
or transmitted, for example a copy of the deed of assignment or an
extracts from the sale of business contract. Assignments can be
recorded against pending or registered trade marks, and can be
transmitted with or without the goodwill of the business. The
assignment can also be partial in the sense that it may only relate
to some of the goods/services covered by the application or
registration. The assignment cannot, however, be geographically
Attending to the assignment or transfer of trade marks does not
have to be a very costly or time consuming process, but allowing
the trade marks to be left behind can turn out to be just that.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Federal Court decision highlights the need for employers to ensure that as well as clearly setting out the duties of employment, employment contracts also include a comprehensive assignment of all intellectual property rights, if the employer is to be assured that all rights in the intellectual property in materials created by employees are owned by the employe
The Government proposes to implement the Sansom Review recommendations in a staged manner over the next three years.
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