Trade Mark Assignments

A registered trade mark is an item of personal property of the registered owner. As such the registered owner can transfer the ownership of a registered trade mark to another person or entity. This person or entity is referred to as the Assignee. A trade mark assignment agreement is used to transfer the ownership of a registered trade mark to the Assignee.

Once the terms of the trade mark assignment agreement have been agreed between the registered owner and the Assignee, the change of ownership needs to be recorded on the Trade Marks Register.

Unregistered trade marks can also be transferred; however the agreement transferring unregistered trade marks is often more complex.

The need to transfer the ownership of trade marks often arises in the context of a sale of business, in disputes about brands and in re-organisations of corporate groups – often where a company has been established for the sole purpose of holding the intellectual property rights (including registered and unregistered trade marks). Such companies are often referred to as IP holding companies or IP HoldCos for short.

The circumstances surrounding the transfer of a trade mark will determine what rights and obligations will be included in the trade mark assignment agreement. For example, if the Assignee is paying a large sum of money for a trade mark then it is likely that the Assignee will want the trade mark owner (or the Assignor) to make a variety of promises (also known as  warranties) about the trade mark being transferred under the assignment.

Where the Assignee of a registered trade mark may not be the entity that will use the trade mark, additional advice and documentation may be required to ensure that the trade mark registration does not become vulnerable for removal from the trade marks register for non-use or other grounds. In this regard, licences and procedures ensuring the trade mark is used under the control of the Assignee will be required and need to be adhered to.

The transfer of ownership of a registered trade mark will also need to be recorded on the trade marks register. Failure to do so does not undermine the Assignee’s ownership of the registered trade mark, but it may affect the Assignee’s ability to sue for infringement of the trade mark and affect the financial compensation that it may claim.

As with the transfer of any IP, the transfer of a trade mark for money may attract a capital gains tax liability on behalf of the seller, and can even attract stamp duty in some instances.

Where the trade mark is a logo or contains an artistic work, the copyright in that logo/artwork will also need to be transferred to the Assignee, as well as due diligence relating to whether the owner of the registered trade mark also owns the copyright in the logo/artwork. In this regard, provisions transferring the copyright in such logo/artwork can be added to the trade mark assignment agreement.

For ease of use we have packaged up our standard trade mark assignment agreement as a paid download at a price which includes one hour of professional time.

Call us today if you are SELLING or TRANSFERRING any of your trade marks (registered or unregistered).

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  • Hanna Myllyoja

    "Marshall IP Group has been assisting SAI Global with its trade mark, IT and other intellectual property agreements for over 4 years now. They have demonstrated a good understanding of our businesses and services and this commercial understanding is applied to the legal advice and assistance they have provided. They have shown expertise beyond their size and (regional) location and an ability to stand their ground against their City counterparts: you get the quality of a city law firm partner but you are not charged the big city law firm rates. They are pro-active, commercially sensible and this has given me, as a busy in-house Corporate Counsel and Company Secretary, peace of mind in relation to SAI Global’s national and international IP Portfolio and other legal needs. "

    Hanna Myllyoja - Group General Counsel & Company Secretary, SAI Global Ltd (ASX:SAI)
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  • Michael Bynon

    "Marshall Marks has recently filed a large number of trade mark applications for us and has a high level of success in terms of getting marks registered with the minimum of fuss and additional costs. They have well established processes that identify problems early on so that time and money is not wasted on problematic applications and deliver their services promptly in a courteous and professional manner. They have demonstrated a strong ability to handle a large and growing IP Portfolio in the very competitive drinks sector of the market. I would recommend them to any company that wants to get a grip on its IP."

    Michael Bynon - General Manager Business Development – Private and Exclusive, Kollaras & Co Pty Ltd
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    "Marshall IP Group has been a supporter of the iAccelerate from its very beginnings. iAccelerate is a state of the art incubator for start-ups and early stage technology businesses located at the University of Wollongong’s Innovation Campus. Marshall IP Group’s CEO, Tim Marshall, has provided thorough, thoughtful and insightful contributions to iAccelerate providing informative seminars, workshops and advice for many of iAccelerate’s companies. Marshall IP Group demonstrates a commitment to the innovation agenda for Australia and the Illawarra region. "

    Dr Elizabeth Eastland - Founder and Former CEO, iAccelerate, Current General Manager, Strategy, Market Vision and Innovation, CSIRO.
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  • Craig Osborne

    "I am delighted to recommend Tim Marshall and the team at Marshall IP Group for all aspects of intellectual property and technology law. Marshall IP Group fills an important space in the legal market in regional Australia and Australian capital cities. The businesses that I am heavily involved in, RMB Lawyers and Unison Outsourcing, have both enjoyed excellent advice and customer service from Marshall IP Group in relation to trade marking our businesses and protecting our brand."

    Craig Osborne - Managing Partner, RMB Lawyers and CEO, Unison Outsourcing Pty Ltd
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  • Tanya Van Der Water

    "Entering the world of trademarks and IP, as a means of protecting our brand both now and in the future, was met with an unclear understanding of where we could turn for assistance. Tim and his amazing team at Marshall IP Group have made the whole process a hassle free one and we confidently recommend their services to anyone wanting to add value to their brand and business. "

    Tanya Van Der Water - CEO, Buckaroo Leatherworks Pty Ltd.
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