Do I Need to Have a Company to Sell a Trade Mark?

Angus

• 2 August 2021
• 3 August 2021
• 5 min read

Are you wondering if you need a company to sell a trade mark? The short answer is no. A trade mark can be owned by an individual, a business, a company or a partnership. Because any legal entity can own a trade mark, any legal entity can sell a trade mark. If you are thinking about selling your trade mark as an individual, this article will explore some of the key considerations to think about before you do. 

Sell or License?

Intellectual property, including trade marks, can be licenced, purchased, sold, inherited, or otherwise transferred through legal transactions, just like any other property. Licensing may be the best option if you want to keep certain rights to your intellectual property. However, if you are no longer interested in your trade mark or are unable to maintain it due to financial, retirement, or health reasons, or due to unanticipated circumstances, selling the rights to the property may be the most practical choice.

While selling intellectual trade mark property might be a quick method to generate money, you must weigh the worth of this one-time sale against the potentially profitable multiple rewards that come with licencing. 

What is the Definition of a Trade Mark?

A trade mark is a legal right conferred over intellectual property that your company may use to represent its products and services. For instance, it could be your company or business name or a tagline. A trade mark is utilised to set your products or services apart from those of your rivals. You can trade mark a:

• term;
• phrase;
• letter;
• number;
• sound;
• scent;
• form;
• logo;
• picture; or
• packaging.

When you register a trade mark, you gain exclusive rights to:

1. utilise the trade mark across Australia’s Commonwealth; and
2. assign, transfer, or sell the rights to the trade mark to another firm to utilise the trade mark for commercial reasons and defend the trade mark if others try to use it.

You can then transfer the trade mark (and these rights) to anybody else, for free or in exchange for any sort of consideration.

Trade Marks and Company Names That Have Been Registered

You do not own a business or corporation name just because you register it. Only if you register the name as a trade mark do you have a legal claim to it. You must register your name as a trade mark to take legal action against unauthorised usage of your name.

On business.gov.au, you may learn more about the differences between a business name and a trade mark.

Keep Your Trade Mark Safe

Check the ATMOSS database of IP Australia to discover if the trade mark you want to utilise is accessible. You can use IP Australia Trade Mark Assist to apply for a new or existing trade mark online. If you purchase a firm that already has a trade mark or a registered design, you must transfer them to your name. This can be done with the assistance of IP Australia or a patent lawyer. 

What Does It Take to Sell a Trade Mark?

Selling a trade mark is not the same as selling a name or an idea. Therefore, it is not comparable to, say, selling domain names on the internet. A trade mark sale involves not only the selling of the business or product’s name, but also the sale of the goodwill connected with that name.

Someone who wishes to sell a trade mark must be the intellectual property owner. Further, they must legally assign rights with the relevant government authority, in this case, IP Australia. Generally, they do this because they are moving on to other endeavours or to create additional cash.

Actions to Take

A trade mark owner can transfer or assign the mark. However, remembering the below two processes, it is the responsibility of the registered owner to document the transfer:

• between parties; and 
• with IP Australia.

The relevant parties must execute a transfer agreement before recording the transfer with IP Australia. This agreement spells out the conditions of the transfer. Next, they must fill out an online form on the IP Australia website to register the assignment.

According to IP Australia records, if the owner fails to properly transfer trade mark ownership rights or the buyer commits trademark infringement on another party’s mark, the seller may be involved in the dispute if he or she still owns the mark, at least on paper.

Key Takeaways 

You do not need to. be a company to sell a trade mark. A trade mark can be owned by an individual, a business, a company or a partnership. Before deciding how to sell your trade mark, you should consider:

1. what it takes to sell a trade mark;
2. how to keep your trade mark safe;
3. the difference between a trade mark and a business name; and
4. actions you can take to transfer or assign a mark.

If you have any questions about whether you need a company to sell a trade mark or need trade mark legal assistance, contact our trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions