Assignment of trademarks

Assignment of trademarks

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This document is an assignment of trademarks and domain names.

This agreement assigns registered trademarks and domain names that include trademarks. In this assignment, the assignor:

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

Registered trademarks

The following provisions of the Trade Marks Act 1995 (Cth) (Act) are relevant to the assignment of a trademark:

  • under section 21(1) of the Act, a registered trademark is personal property;
  • the registered owner has the power to deal with a trademark as its absolute owner under section 22(1) of the Act;
  • a registered trademark, or a trademark 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 trademark in the trademark register maintained by IP Australia is authorised by section 109 of the Act.

Assignments of trademarks

An assignment of a trademark may be partial. That means it may apply to only some of the goods or services in respect of which the trademark is registered. However, the assignment of the use of a trademark in a particular area may not be partial (see section 106(2) of the Act).

The assignment of a trademark may or may not include the goodwill of the business concerned, as the goodwill in the trademark and the business are separate (see section 106(3) of the Act). In circumstances where the goodwill is also being assigned, it may be appropriate to apportion the consideration between the value of goodwill and the value of the trademark. This is because there can be tax and stamp duty implications.

Related documents

The following documents are also assignments of trademarks:

  • “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;
  • “Assignment of application for registration of trademark” deals with an assignment of an application for registration of a trademark; 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.