As with other forms of intellectual property, a trade mark belongs to the registered owner. To assign ownership to another party, there needs to be a contract agreement between the current owner (the ‘assignor’) and the proposed owner (the ‘assignee’). This agreement will need to be signed by an authorised person.
When preparing your documents, you'll need to use some key terms:
- The ‘assignor’ is the current owner of the trade mark
- The ‘assignee’ is the proposed new owner of the trade mark
- An ‘authorised person’ is someone who’s permitted to act as a party’s representative and has the authority to declare and sign documents on its behalf.
How to assign ownership
Step 1. Do your due diligence
There are a range of considerations when assigning ownership of your trade mark. It’s up to you to investigate and figure out what’s required to make an agreement in accordance with law. Being unaware of something or having an intention that’s different to what’s in the agreement doesn’t make a difference to the law. That’s why it’s important for all parties to:
- Understand the specifics of what’s being assigned
- Ensure that the agreement protects their interests
- Ensure that the agreement complies with legal requirements.
Step 2. Draft a contract agreement
Your contract should:
- Set out all the terms in your assignment
- Clearly state that the title is transferred from the assignor to the assignee
- State whether it’s a full or partial assignment:
- full assignment — the full or partial transfer of ownership title, with full transfer of goods and services
- partial assignment — the full or partial transfer of ownership title, with partial transfer of good and services. This will result in two (or more) trade marks with the same representation, but with different owners of the associated goods and services.
Step 3. Complete the contract agreement
The agreement is completed when it’s signed by an authorised person on behalf of each party.
Step 4. Ask us to record the assignment on the trade marks register
Once the title has been assigned, either the assignor or assignee can ask us to record the assignment in the register.
Thinking that recording the assignment on the trade marks register enacts the transfer of ownershipTransfer of ownership is enacted through an agreement between the assignor and the assignee, which is your responsibility. Once you have this agreement and the supporting evidence, you need to submit this to us so we can record the assignment in the trade marks register.
Assuming you don’t have to document a trade mark assignment because the new owner has a common link to you. For example, through subsidiaries, shareholders, directors, or in the case of company restructuringEven when the new and previous owners share common ownership, a documented agreement between entities is still necessary to transfer the trade mark title. Therefore, even when the same person signs on behalf of all parties, they must do their due diligence to ensure that the agreement complies with legal requirements.
Thinking that a signed document saying that parties don't object to changing ownership of a trademark, is the same as assigning over the titleTo record an assignment on the register, you need to provide us with a document that’s been signed by the authorised parties and clearly states that a transfer agreement has been made.
Assuming that a trade mark can be assigned after a company is deregisteredOnce a company is deregistered, it no longer owns any assets, so can’t legally assign any trade marks. A company’s assets must be distributed before the company is deregistered, otherwise these will fall under the jurisdiction of ASIC (Australian Securities and Investment Commission).
Not considering the legal personality of the assignor and assigneeThe entity you assign a trade mark to and from needs to have legal personality. This is any person or entity that has rights and duties in law and can undertake legal actions. An entity with legal personality can be:
- An individual
- A company
- An organisation.
The following entities can’t be assigned a trade mark because they don’t have legal personality:
- Business names — the trade mark is owned by the business owner(s), not the business
- Trusts — the trade mark is owned by the trustee(s), not the trust
- Partnerships — the trade mark is owned by the individuals who make up the partnership
- Other unincorporated bodies — such as clubs, associations and societies, can only own a certain type of trade mark called a collective trade mark.
What to send us
To make a change to the register, here's details of the documents we'll need you to supply.
The approved request form
If you’ve applied through online services via the ‘change ownership’ request type, an electronic form is considered a request.
This proves that the assignee now owns the trade mark. Supporting evidence must be in English or accompanied by an English translation and include the following:
- The date of assignment (if this isn’t known, then you may be able to use the date the contract agreement was signed)
- Details of both the assignor and the assignee, including:
- name(s), ACN/ABN (if an Australian company)
- their addresses
- the assigned trade mark number(s)
- A clear statement about the agreement and transfer
- A signature from both parties, including:
- the signatory's name
- the name of the party they’re signing on behalf of. For example, Company X, assignor
- if signed on behalf of a company, the signatory's capacity and authorisation. For example, Director
- in the case of a partial assignment, a co-owner's consent to the assignment may be required.
- To learn more about assigning trade marks, have a look at the section titled What is assignment and transmission? in the Trade Marks Manual of Practice and Procedure.
- To learn about ASIC's guidelines on deregistration of a company and what happens to property, visit:
- Assigning trade marks can be a complex process. This document provides a broad overview and shouldn’t be used as legal advice. To make sure your assignment meets legal requirements, you may wish to seek professional advice.