Before we can start having the transferring of ownership talk, we should probably offer up a little bit of a trade mark refresher to get us all on the same page. So let’s get down to it!
Let’s get back to basics - what is a Trade Mark?
A trade mark is a way for a business to protect its intellectual property, so that no other businesses can use it. Bit too wishy-washy? Example time! Juliette has a business called Juliette’s Jewellery which she uses (oh my gawd, she used what!?) to sell jewellery. In order to protect this, she trade marks it so that other businesses can’t use that phrase when they’re selling jewellery.
It’s not just names though, it can be logos, pictures, numbers, phrases or a combination of all of these things. Even a particular smell! I wonder what smell I’d trade mark…? Moving on, I digress.
Ok one more thing:
FUN FACT: Cadbury even has their iconic purple colour trademarked! Now back to work!
Registered v Unregistered Trade marks
Registered trade marks: are trade marks that have gone through the expensive and lengthy registration process to be approved by IP Australia, which is shown by the use of the ® symbol. This registration also allows their owners to take immediate action against another business infringing on your rights.
Unregistered trade marks: are trade marks that haven’t gone through the IP Australia registration and approval process and are protected by common law. Unregistered trade marks feature the ™ symbol, buuuut are more difficult to defend as your own.
Assigning Trade marks
Assigning trade marks means that all the rights to that trade mark are transferred from one owner to the new owner (PS. when we speak about owners, that can also be a business). An important consideration for the owner assigning aka transferring ownership in the trade mark, is that this will mean they no longer have rights to use that trade mark anymore.
The process to assign a trade mark is quite simple for registered trade marks. All you will need is a document signed by all of the parties (i.e. everyone ‘getting rid of’ and everyone ‘getting’ the trade mark) supporting the request to assign the trade mark (how many times can we say trade mark in one paragraph? A lot!) This then needs to be submitted to IP Australia along with a completed assignment form. Easy peasy!
Just because we’re the best, here are the links for the assignment forms. This is the one for ‘full assignment’ where all of the owners are changing - so if John and Jenny both owned it currently and are going to assign it to Peter and Paula. This is the one for ‘partial assignment’ where some of the owners will remain the same - so if John and Jenny both own it currently but Jenny no longer wishes to and Paula’s going to buy her share from her.
Licensing Trade marks
Licensing on the other hand, means that the owner/s of the trade mark doesn’t change but they give permission to another person to use the trade mark. So if we go back to John and Jenny, they still want to own the trade mark and have the protection that it’s offering them but they’d like to let Peter and Paula use it as well. Another example that you may be more familiar with is Disney. Disney holds the intellectual property rights in its characters that allow it to prevent any use of the character names or images, however it is still possible to use provided you obtain a license. Disney has a website dealing with how you can obtain a license from them!
When an owner licenses their trade mark it is important that they set out exactly on what terms they wish to license before signing the contract. Some of the variables that the owner may wish to think about when licensing their trade mark are:
- Location - where are you happy for the new user to use the trade mark?
- Purpose - what is the new user allowed to use the trade mark for?
- Term - how long are you willing to let the new user use it for?
- Exclusive or non-exclusive - will the new user be the only person who you will let use the trade mark, or do you want to be able to keep the option to let other people also license to use it?
***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.
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