This is a document agreement to assign an application for registration of a trademark.
The agreement deals with:
- the assignment of trademarks;
- applications for the trademarks’ registration being made under the Trade Marks Act 1995 (Cth); and
- domain names that include the trademarks.
Application for registration of a trademark
There is no property in an application for registration of a trademark. Where the assignor has not yet registered the trademarks, it is prudent for an assignee to acquire the goodwill of the business as part of the transfer of the trademarks. If the goodwill is not transferred, the assignor could continue to use the unregistered trademarks as a part of its business. It may not be able to give good title to the unregistered trademarks without also assigning goodwill, which could make registration difficult for any future assignee.
Classes of trademarks
The classes in which the trademarks are proposed to be registered will correspond to the goods and services in respect of which the trademarks are or will be used.
The following documents are also assignments of trademarks:
- “Assignment of trademark”;
- “Assignment of trademark including warranty and indemnity with assignment” deals with an assignment of trademarks with the goodwill associated with the business in which trademarks have been used in relation to classes of goods and services; and
- “Assignment of registered trademark by registered proprietor to owner of goodwill” deals with an assignment of a trademark to the person who is the owner of goodwill.
This document has been authored for Lexis Nexis by Morris Averill, Solicitor, Averill Media Legal Services.
This document is prepared with the assistance of Specialist Editor Jim Lennon, Special Counsel, Norton Rose Fulbright.