5 Mistakes to Avoid When Changing Your Trade Mark Ownership
Intellectual property (IP) is the most important asset of your business. Your IP helps distinguish your goods or services from all of your competitors, forming a critical part of your brand and business identity. If you are buying or selling a business or transferring any aspect of ownership of your business, it is important to change your trade mark ownership properly. This article will take you through five mistakes to avoid when changing your trade mark ownership.
1. Being Too Vague
It is important not to be too broad or vague about what is included in transferring a trade mark. Any documents for the transfer should provide specific details about the included trade marks. Make sure to include the trade mark number and all other specifics.
It is also essential that every trade mark owner agrees to and signs on the transfer of each specific trade mark. Simply saying that you agree to transfer all trade marks of the business could cause trouble later down the line if there are any disputes about what was included in the transfer.
2. Not Checking Eligibility
To hold a trade mark, you have to be a legal entity to be eligible. You must check that the person you are changing the ownership to is a legal entity, or you risk the change in ownership being invalid. Legal entities include:
- incorporated bodies;
- incorporated trusts;
- a body politic; and
- a trustee acting on behalf of a trust.
While this list seems all-inclusive, things that are not legal entities (and therefore not eligible to hold a trade mark) include:
- a business partnership;
- a business name;
- directors or shareholders of a company when acting on behalf of the corporation;
- a trust in its own name; or
- a corporate entity that has not yet formed.
3. Not Providing the Right Documents
Changing your trade mark ownership is a relatively straight forward process, but you must submit the correct documents. You must fill out the assignment request form on IP Australia, and you will need to provide some other documents as evidence to support your request for the assignment. Some documents you should consider providing as evidence are:
- deeds of assignment;
- sales agreement; and
- letters of assignment.
You must also ensure that all old and new trade mark owners have signed all documents you provide.
4. Not Knowing the Difference Between Licensing and Assigning a Trade Mark
When changing trade mark ownership, you need to consider to what extent you want to give up your ownership of your trade mark. Licensing and assignment are two different ways you can transfer your trade mark. You can see the differences between licensing and assignment in the table below:
|Gives another party permission to use your trade mark upon certain conditions||Changes ownership of your trade mark|
|Allows you to put limitations on the use of the trade mark license||Requires an application to change assignment|
|Allows you to profit from the transfer of the trade mark license||Can be either a partial (some aspects of ownership will stay the same) or full assignment (the ownership completely changes)|
|Allows you to retain ownership of your trade mark||Results in your loss of ownership of the trade mark|
5. Not Considering ‘Goodwill’
The key difference between transferring registered and unregistered trade marks is ‘goodwill’. Goodwill refers to the value your trade mark has acquired over time through consumers recognising your trade mark. For example, suppose you have been using a trade mark for a long time, but it is not registered. In that case, you will have to prove the goodwill or reputation of the trade mark by showing extensive use over time and demonstrating that consumers recognise the trade mark as yours.
Given that unregistered trade marks will not have any registered documents to effect a change of trade mark ownership, establishing goodwill is essential for changing ownership of unregistered trade marks.
If you are a relatively new business trying to transfer ownership of an unregistered trade mark, you are going to find it difficult to provide that goodwill has attached itself to your unregistered trade mark. This is important to consider if you are transferring all of your IP.
If you are buying, selling, or transferring ownership of a business, it is important that you transfer trade mark ownership correctly. Some key mistakes to avoid include:
- being too vague in the transfer;
- not checking eligibility to transfer a trade mark;
- providing the wrong documents;
- not knowing the difference between licensing and assigning a trade mark; and
- not considering goodwill.
If you have any questions about transferring ownership of your trade marks or require trade mark legal assistance, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
Licensing and assignment are two different ways you can transfer your trade mark ownership. Licensing gives another party permission to use your trade mark upon certain conditions and allows you to profit from the transfer of the trade mark license. On the other hand, assignment changes ownership of your trade mark and requires an application.
Goodwill is the reputation that a brand has acquired through its trade mark over a period of time. Goodwill can attach itself to both registered and unregistered trade marks. You may own a relatively new business trying to transfer ownership of an unregistered trade mark. In that case, you will find it difficult to provide that goodwill has attached itself to your unregistered trade marks.
Transferring trade mark ownership is a relatively straight forward process. You will have to fill out the assignment request form on IP Australia and provide some forms of evidence to support your request for assignment.