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 assign a trade mark when the ownership of a trade mark passes to another person or legal entity. Below, we explain the process of the assignment of a trade mark and the relevant considerations to take into account.
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).
If your business plans to use the trade mark in an entity that you have not formed yet, you can still file the trade mark application as an individual and subsequently assign the trade mark to the new body upon formation.
What is an Assignment or Transmission of a Trade Mark?
Suppose your business experiences change within its internal structure and is undergoing a process where it is transferring rights or updating ownership. In that case, you must think about the impact on any existing trade marks and ensure you register them under 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. This can also involve adding or removing any current owners.
IP Australia records any assignments or changes to the ownership of a trade mark, and you must notify them of any change. This ensures that assignments and transmissions of title that have been effected 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 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. However, the assignor still owns the trade mark for the remaining goods and services.
When Can You Assign a Trade Mark?
A trade mark can be assigned from one party to another during the application process or even 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 request for assignment. 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.
After IP Australia receives the form with the evidence and records the assignment or transmission, the assignee will be considered the trademark's owner.
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.
Rules for Certification Trade Marks and Collective Trade Marks
IP Australia has certain rules regarding trade marks filed as a certification or collective trade mark.
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.
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 is obliged to 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.
