So, you’re taking the huge step of selling your business, which means you’ll need to transfer your business name. Exciting times! But you’ve got no clue how to handle transferring that cheeky (but important) bugger over to your biz’s new owner.
At Foundd Legal, we’ve got you covered. Here’s the lowdown on how to change ownership of your trademark the legally legit way.
What does it mean to change ownership of a trademark?
Before we chuck on some bangers and belt out the tunes to celebrate your biz sale, we need to make sure you understand what it means to change ownership of your trademark.
| Transferring ownership of your trademark means that all the rights to that trademark go from one owner (you) to another (your business’ purchaser, which can be an individual or another business structure, such as a company). This means that you’ll no longer have the right to use that trademark in any capacity (if you’re doing a “full assignment” – more on that in a sec). |
How to transfer ownership of a trademarked business name
The business name change of ownership process is easy-peasy, if we do say so ourselves.
There are two options:
- Full assignment: for when you’re transferring ownership across all goods and services classes
- Partial assignment: for when you’re only transferring some of the goods or services, resulting in two or more of the same trademark listed on the register, but with differing goods and/or services
Once you’ve completed the form, here’s what’s next:
- All involved parties need to sign it – that is, everyone who owned the trademark and everyone to whom the trademark is being transferred. This is to confirm that all parties support the application for the business name change of ownership.
- Send your submission to IP Australia via their online services portal (select ‘change ownership’ and follow the prompts). This will require the following documents and information:
- The approved request form
- The date of assignment
- The assignor and assignee’s name(s), ACN/ABN and addresses
- The assigned trademark number(s)
- A statement summarising the details of the transfer
- Signatures from all parties
Then, you need to wait to hear from IP Australia with their approval of your request. Your (former) trademark will be updated on the trademark register with the new owner’s details. Aaaand you’re done! Trademark transferred. Pop the bubbly!
Step 1: sell your business and transfer your trademarked name.
Step 2: cheers to your stellar next chapter!
But wait, what is a trademark?
To put it simply, a trademark is a key way for a business to protect its intellectual property, and prevent other businesses from using it (or something sneakily similar to it).
You can trademark words, logos, colours and even smells – or a combination of these – that have a distinctive quality that’s unique to your biz and the goods you sell or the services you offer.
Psst… Did you know that Cadbury has trademarked their iconic purple colour? Good on ‘em. It’s a vibe. Just like your business name. So, for your business name to change ownership the legally legit way, keep reading!
The differences between registered and unregistered trademarks
You may be wondering: “What’s the point of registering my name as a trademark?”
Well, let’s get that Q A’d for you – because you’ll need to know when you change ownership of your trademark during the business sale.
Here’s a quick breakdown of the differences between a registered and an unregistered trademark:
- Registered trademarks have gone through the IP Australia registration process. Once a business name trademark is registered, you can add a fancy little ® symbol to it, which signals to the world that you’ve taken your biz (course, or service!) name seriously and obtained the legal right to use it how you see fit, throughout the country, for the next 10 years. You’ll have certain protections between the application being submitted and the trademark officially completing the registration process, so it’s worth getting onto it ASAP!
- Unregistered trademarks are protected by common law, but not by IP Australia, as they don’t appear on the trademark register. This means if someone infringes upon your trademark (e.g. by using something similar, or even attempting to register it themselves), it’s much trickier (not to mention more expensive!) to defend your rights. Trust us… it’s much less of a headache to get your trademark registered off the bat (and we can help! Think of us as your legal ibuprofen).
Legit tip: let’s clear up a little confusion about the difference between the ® and ™ symbols.
You can use the ™ symbol regardless of whether you’ve registered your trademark. In most cases, you’ll start using it once your application’s been submitted, while you await registration (and the privilege of using the ® symbol). But you can also apply it to unregistered trademarks. So essentially… the ™ symbol doesn’t mean much, and doesn’t offer you any particular protection. It’s the registration (or registration process) that will actually give you actionable rights, then allow you to transfer your business name trademark to someone else.
What does it mean to license a trademark?
When you license a trademark, you’re giving another person permission to use it for a particular purpose. An example of this is the Disney corporation, which licenses its trademarked assets to other businesses, allowing them to use characters, quotes and other intellectual property on their products (and profit from them). They’ve got a handy FAQ about this exact topic, if you’re interested!
When licensing your trademark, it’s super important tot set out the exact terms of the licence using a comprehensive agreement.
Consider:
- Location – where you’re happy for the licensee to use the trademark
- Purpose – what they can use the trademarked assets for – e.g. printing images on t-shirts or tote bags
- Term – how long you’re willing to let them use the trademark for
- Exclusivity – whether they’ll be the only one using the trademark, or you want to be able to license it to others
- Benefits – what you’re getting out of the arrangement – e.g. a cut of the profits)
If you’re looking for a licence agreement that ticks all the boxes, guess what? We’ve got you covered.
And if you’d like one of our very-not-scary lawyers to personally walk you through how to change your business name ownership, book a call here.
***Disclaimer. Please read!!***
This article is for general information purposes only and should be used solely as general guidance. It does not and is not intended to represent legal advice or other professional advice.
All rights reserved. © Foundd Legal Pty Ltd
