Trademark Assignment
A Trademark Assignment is a deed for the assignment of registered trademarks and of domain names that include trademarks.
4.7 (11 reviews)
Last updated January 22, 2025
Under 10 minutes
Suitable for Australia
Written by
Edwin Montoya Zorrilla
Reviewed by
Damin Murdock
Document Overview
This is a deed for the assignment of registered trade marks and of domain names that include trade marks. Assignment or transmission of a trade mark refers to the process by which ownership of a registered trade mark or a trade mark whose registration is being sought may be passed from one party to another.
Once this deed of assignment has been completed, it will need to be attached to your Assignment request with IP Australia. For more information, click here.
The Legal Risk Score of a Trademark Assignment Template
Our legal team have marked this document as medium risk considering:
- The document requires the assignor to provide all necessary acts and documents to ensure the transfer of rights.
- The assignee is responsible for paying all relevant government charges and taxes related to the deed, which could become financially burdensome if these costs are higher than anticipated or if penalties for late payments are enforced.
- The assignment must be executed as a deed in order to be effective.
Users familiar with legal and business transactions should find the document manageable, but it is advisable to understand the specific obligations and liabilities that come with it.
Trademark Assignment Checklist
Complete your free Trademark Assignment with our checklist
Register Changes with Relevant Authorities
The assignee should ensure that the transfer of the trade marks and domain names is registered with the appropriate intellectual property and domain registration authorities to legally complete the ownership transfer.
Verify Financial Obligations
The assignee needs to pay any applicable stamp duty and other government charges as required by the relevant legislation.
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.
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