Trademark Transfer with Goodwill
In both instances, assignment is the process whereby a person, the assignor, transfers rights or benefits to another, the assignee. … The right or benefit being assigned may be a gift (such as a waiver) or it may be paid for with a contractual consideration such as money.
A trademark is a word or symbol (it can also be a smell or a colour but these are less common) used to distinguish the goods or services of one seller from those of another.
A trademark can be in the form of a word, phrase, letter, number, sound, scent, logo, picture, symbol, shape, colour, and aspect of packaging or any combination of these.
Registered trademarks give exclusive rights to use, license or sell that mark for the classes of goods and services in which they have been registered. International trademarks can be acquired via the Madrid Protocol once an Australian trademark has been registered. Registration in Australia confers a National monopoly on the mark.
The legislation governing the registration of trade marks in Australia is found in the Trade Marks Act 1995 (the ‘TM Act’) and the Trademarks Regulations 1995 (the ‘TM Regulations’). This suite is not concerned with the registration of Trademarks or other administrative procedures related to the operations of IP Australia.
The administration of the trademark registration system is undertaken by the Australian Trademarks Office of IP Australia. IP Australia is an Australian Government agency, having responsibility for administering patents and trademarks, and other intellectual property rights in Australia.
A proprietor of a registered trademark can stop other persons from using mark on similar goods and services. However, if your client’s trade mark is well known in Australia then your client may be able to prevent another person from using the same or similar words on goods or services that are unrelated to their registered goods or services.
An assignment of a trademark with goodwill requires a form to be lodged with IP Australia. There are no filing fees payable for lodgement of the form. The form may be downloaded from the IP Australia website which can be reached by clicking here.
In addition to the form, IP Australia requires evidence of the assignment. Any of the deeds of transfer provided with this precedent suite are sufficient.
The deeds are suitable for the sale of a trademark as part of a sale of business. Includes:
- Definitions, interpretation
- Terms of Assignment
- Assignor’s warranties
- Further assurances
- General provisions
Includes a description of the Trademark(s) in the Schedule, and attach any graphical representations to Annexure A.
7 pages long.
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