Trademark Assignment

What does this Trademark Assignment cover?

In this assignment, the assignor:

• commits to assist the assignee to complete the transfer of the trade marks by assisting with registration of the change of owner with the trade marks registry;
• provides warranties related to title in the trade marks and domain names; and
• provides undertakings related to preserving the registration of the trade marks.

Do I need an assignment or a license?

An assignment of a trade mark will involve the transfer of its ownership to another person or entity. In contrast, licensing a trade mark enables a company (a licensor) to grant the exclusive or non-exclusive use of it’s trademark to another business (a licensee), and also allows the licensor to set out the terms associated with the use of its trademark.

An assignment of a trade mark may be partial. That means it may apply to only some of the goods or services in respect of which the trade mark is registered.

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.

Registered trademarks

Under the Trade Marks Act 1995 (Cth):

• section 21(1) of the Act states that a registered trade mark is personal property;
• the registered owner has the power to deal with a trade mark as its absolute owner under section 22(1) of the Act;
• a registered trade mark, or a trade mark whose registration is being sought, may be assigned in accordance with section 106(1) of the Act; and
• an application for recording of an assignment of a registered trade mark in the trade mark register maintained by IP Australia is authorised by section 109 of the Act.