Assignment or transmission of a trade mark refers to the process by which ownership of a registered trade mark or a trade mark whose registration is being sought may be passed from one party to another. This includes adding or removing current owners/applicants.
This request may be made to notify the office of a full change of ownership, where all the goods and services in an application or registration are transferred or partial change of ownership, where the original owner of the trade mark retains the trade mark in respect of some of the goods and/or services in the application or registration.
You will need to ensure that the person you assign is eligible to hold a trade mark, i.e. has a legal entity, such as; an individual or individuals, a company, an incorporated body, an incorporate trust, a trustee acting on behalf of a trust, for example 'John Nguyen as trustee for the Nguyen Trust' or a body politic.
You will need to attach documentary evidence to support your Assignment request. Evidence must be dated and signed by all parties, that is the previous owner/s and the new owner/s. The evidence must include the IP Right/s to be assigned. The most common forms of evidence include; Deed of Assignment, Letter of Assignment, Sales Agreement, Declaration, Certificate of Merger or Merger Document.
Some of common examples include the transfer of ownership;
|
From |
To |
Type |
|
John Nguyen |
John Nguyen |
Change to only one owner |
|
Mary Nguyen |
Mark Jones |
|
|
|
|
|
|
John Nguyen |
Mark Smith |
Complete change of ownership |
|
Mary Nguyen |
|
|
|
|
|
|
|
Mark Smith |
Mark Smith |
Adding an owner |
|
|
Mary Nguyen |
|
|
|
|
|
|
John Nguyen |
John Nguyen |
Removing an owner |
|
Mary Nguyen |
|
|
These requests are made through eServices. The full Assignment request form can be found here and the patrial Assignment request form here.
A step by step guide on how to lodge an Assignment request can be found here.
Specific rules for Certification trade marks
If the certification trade mark is the subject of an application for registration that has not yet been examined, or is still under examination, the assignment may proceed as normal.
If the certification trade mark is under examination and with the ACCC for review or is registered the assignment must not be recorded without evidence that the ACCC has consented to the transfer of ownership.
Collective trade marks
A collective trade mark cannot be assigned or transmitted.