How Do I Transfer a Trade Mark in Australia?
Emily Young
A trade mark is an important asset for your business. Trade marks are one type of intellectual property (IP) and can help your brand stand out amongst your competition. In addition, trade marks have wide-reaching legal and marketing benefits and can increase the overall value of your business. The value of trade marks means that they will likely be included in the transfer of ownership when selling a business. This article will take you through what trade mark transfer is and the process in Australia.
What Is a Trade Mark Transfer?
A trade mark transfer or an assignment is the process of transferring your trade mark to another business. This might include adding or removing current owners of your trade mark. In Australia, it is possible to transfer your entire trade mark rights or partial rights. For example, a partial trade mark assignment might mean you only want to transfer the rights to your trade mark for specific goods and services.
Why Would I Transfer a Trade Mark?
You typically transfer a trade mark when selling a business. If you are purchasing a business, its IP, including the trade marks, is often a large part of the purchase price. Usually, the sale of a business will include the transfer of trade mark ownership.
How to Transfer a Trade Mark
1. Ensure Eligibility
The first step to transferring a trade mark is to ensure that the new owner is eligible to hold a trade mark. The new owner must have a legal entity, either by way of being:
- an individual;
- a company;
- a trust;
- an incorporated body; or
- a trustee acting on behalf of a trust.
If you are purchasing a business, you want to ensure that the trade mark is transferable. This means ensuring that the trade mark is registered and that you are not purchasing an unregistered or an expired trade mark.
2. Have an Agreement
The next step in transferring trade mark ownership is to write an agreement. If the transfer of a trade mark is not within the sale of business documents, you will need to devise an agreement to outline the transfer. Such a document should outline exactly what the trade marks are and to what degree ownership is being assigned. You should seek to include the trade mark numbers if possible.
3. Notify the Trade Mark Office
Once a trade mark assignment has been agreed upon, you will need to notify the trade mark office of the transfer. You should also include any necessary proof that you own the trade marks you seek to transfer. This might include any sales agreements, letter of assignments, declarations, or merger documents. Once the transfer has occurred, the new trade mark owner’s details will be found on the trade mark register.
Trade Mark Licenses
In addition to assigning a trade mark to someone else, you can also transfer the rights to a trade mark via a licensing agreement. A trade mark licensing agreement enables the owner of a trade mark to give its rights to another party, known as the licensee.
A trade mark licensing agreement usually comes with specified terms and conditions that limit the licensee’s use. For example, these limitations might prevent the licensee from using the trade mark in certain geographical areas or certain trade mark classes. This is one way that trade mark owners can profit without ever assigning your trade mark rights.
Key Takeaways
As an asset of your business, it is possible to transfer the title of your trade mark to another party. Some of the ways that this can be done is by a:
- trade mark assignment; or
- licensing agreement.
If you need assistance transferring a trade mark, contact our experienced trade mark lawyers on 1300 657 423.
Frequently Asked Questions
A trade mark transfer, also referred to as a trade mark assignment, is the process of transferring your trade mark to another business. This might include adding or removing current owners of your trade mark. In Australia, it is possible to transfer your entire trade mark rights or partial rights.
You can transfer a trade mark by trade mark licensing or by trade mark agreement. A trade mark agreement is the usual process when buying or selling a business and acquiring the trade mark assets. The key steps to assign a trade mark is to ensure the transferee is eligible to hold a trade mark, write a transfer agreeement and notify the trade mark office of the change in ownership.