What Steps Should I Take When Assigning a Trade Mark?
If you are in the process of selling your business or a product, it is likely that you will also have to sell the associated trade mark protecting your business or product. In this instance, the transfer of a trade mark from its owner to a buyer is called an assignment. This article outlines the steps you should take when assigning a trade mark, covering:
- what an assignment is;
- assigning of different types of trade marks; and
- the process of assigning each trade mark.
What is an Assignment?
An assignment of a trade mark involves a trade mark owner registering a change in ownership of the trade mark. You assign a trade mark when you:
- sell a trade mark to another person; or
- add or remove current trade mark owners from the registry.
Once you assign your trade mark to another person (the assignee), this person now enjoys your exclusive right to use, licence and sell your trade mark. The trade mark becomes the personal property of the assignee, who can then use the trade mark to distinguish their own goods or services.
Types of Trade Marks That Can Be Assigned
The ‘™’ symbol commonly identifies unregistered trade marks. This indicates to the public that anything with the ‘™’ symbol is a unique identifier of the business’ goods or services. However, business owners do not register these trade marks with IP Australia and are therefore usually used when a business:
- creates a new product or service; or
- is in the process of registering a trade mark.
On the other hand, a registered trade mark will carry the symbol ‘®’ and enjoys more comprehensive protection. Registered trade marks give owners the exclusive right to use, license and sell their trade mark for 10 years from the filing date of their application.
The process of assigning your trade mark will depend on the type of trade mark you own, as explained below.
Assignment and ‘Goodwill’
You can assign both unregistered and registered trade marks. However, there is a key difference in assigning an unregistered trade mark. Under Australian law, you can only assign an unregistered trade mark if you also assign the goodwill of your business.
The Federal Court recently displayed this key difference in the case of Kraft Foods Group v Bega Cheese .
Kraft underwent a mass restructure in 2012 which led them to grant the newly restructured Kraft Group with a license to use its signature marks, some of which were unregistered trade marks. The newly restructured Kraft Group later agreed to sell its peanut butter business to Bega. However, both companies continued to produce similar products. The Federal Court eventually found that initially, Kraft never assigned its unregistered trade marks to the Kraft Group because the goodwill of its business was not assigned. This meant that Kraft remained as the owner of the business goodwill until Bega acquired it in the 2017 sale.
The reason why you must transfer an unregistered trade mark alongside the goodwill of a business is that without goodwill, there is a chance that businesses can deceive and confuse consumers.
On the other hand, you can assign a registered trade mark with or without the goodwill of a business. If you seek to assign an unregistered or a registered trade mark, it may be helpful to seek legal advice to ensure that your assignment goes as planned.
Full Assignment vs. Partial Assignment
You can assign a trade mark in two different ways. A full assignment is where a trade mark owner transfers their full ownership of the trade mark to another person. On the other hand, a partial assignment is where a trade mark owner chooses to transfer their trade mark to a new owner with respect to only some of their goods or services. This means that you still retain exclusive ownership of the trade marked goods that you have not assigned.
For example, you might own trade marks concerning the keep cups and water bottles your business sells. If you partially assign ownership of the trade mark protecting the keep cups, you will still retain your exclusive rights concerning the water bottles.
However, you cannot make a partial assignment concerning the use of a trade mark in a particular geographical area. For example, if you operate your business in Sydney, you cannot partially assign your trade mark for use only in Newcastle.
Request for Assignment via IP Australia
You must register a full or a partial assignment of a trade mark with IP Australia. The registration process will require you to fill out several documents, including:
- an assignment request form; and
- evidence of assignment.
Generally, these forms require:
- your personal details as the assignor;
- your title to the assigned trade mark;
- the details and signature of the assignee; and
- the identifying number of the trade mark that you are assigning.
The additional evidence that you will be required to provide may include a:
- signed letter of assignment; or
- sales agreement.
An assignment of a trade mark involves transferring ownership from the trade mark owner to another person. Depending on if you are assigning a registered or an unregistered trade mark, you will also have to transfer the business’ goodwill. You can request a full or a partial assignment of your trade mark via IP Australia. If you need further legal assistance with assigning your trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The value of your trade mark is usually associated with the goodwill of your business. If your business has a strong reputation, there is a greater chance that its trade marks are higher in value.
An assignment of a trade mark involves the transfer of ownership of your trade mark. If you assign your trade mark in full, you no longer have exclusive rights to use the trade mark. On the other hand, you can grant another person a licence to use your trade mark for an agreed period of time. Once the licencing period is over, you regain your exclusive rights to use your trade mark.
A registered trade mark with IP Australia only protects you within Australia. You can apply for overseas protection by applying directly to a country’s trade mark office. You can also apply via the World Intellectual Property Organisation (WIPO) if the countries you seek trade mark protection with are members of the Madrid Protocol.