paper

ip australia assignment of patent

IPA manuals logo

  • Part 1 Introduction, Quality
  • 1. Introduction
  • 2. Quality Management at IP Australia
  • 3. Monitoring and Measuring Quality at IP Australia
  • 4. Examination Quality Standards
  • 5. Practice Change Procedure
  • Part 2 General Filing Requirements
  • Relevant Legislation
  • 1. How a document is filed
  • 2. Filing of Documents - requirements as to form
  • 3. Non-compliance with filing requirements
  • 4. Filing Process (excluding filing of applications for registration)
  • Part 3 Filing Requirements for a Trade Mark Application
  • 1. Who may apply?
  • 2. Form of the application
  • 3. Information required in the application
  • 4. When is an application taken to have been filed?
  • 5. The reason for having minimum filing requirements
  • 6. The minimum filing requirements
  • 7. Consequences of non compliance with minimum filing requirements
  • 8. Other filing requirements
  • 10. Process procedures for non payment or underpayment of the appropriate fee
  • 11. Process procedures for the filing of a trade mark application
  • Part 4 Fees
  • 1. Fees - general
  • 2. Circumstances in which fees are refunded or waived
  • 3. Procedures for dealing with "fee" correspondence
  • 4. Underpayments
  • 5. Refunds and or waivers
  • 6. No fee paid
  • 7. Electronic transfers
  • 8. Disputed credit card payments/Dishonoured cheques
  • Part 5 Data Capture and Indexing
  • 1. Background
  • 2. Data Capture
  • 3. Indexing and Re-scanning
  • Glossary of Image Descriptors
  • List of Top Level Terms
  • Word Constituents
  • Device Constituents
  • 4. Regulated signs
  • Part 6 Expedited Examination
  • 1. Expedited Examination
  • 2. Expedited Examination Process
  • Part 7 Withdrawal of Applications, Notices and Requests
  • 1. Withdrawal of an application, notice or request
  • 2. Who can withdraw an application, notice or request?
  • 3. Procedure for withdrawal of an application, notice or request
  • 4. Procedure for withdrawal of an application to register a trade mark
  • Part 8 Amalgamation (Linking) of Trade Marks
  • 1. Amalgamation of applications for Registration (Transitional)
  • 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
  • Part 9 Amendments and Changes to Name and Address
  • 2. Amendment of an application for a registration of a trade mark - general information
  • 3. Amendment before particulars of an application are published (Section 64)
  • 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
  • 5. Amendments to other documents
  • 6. Amendments after registration
  • 7. Changes of name, address and address for service
  • 8. Process for amendments under subsection 63(1)
  • Part 10 Details of Formality Requirements
  • Introduction
  • 1. Formality requirements - Name
  • 2. Formality requirements - Identity
  • 3. Representation of the Trade Mark - General
  • 4. Translation/transliteration of Non-English words and non-Roman characters
  • 5. Specification of goods and/or services
  • 6. Address for service
  • 7. Signature
  • 8. Complying with formality requirements
  • Annex A1 - Abbreviations of types of companies recognised as bodies corporate
  • Annex A2 - Identity of the applicant
  • Part 11 Convention Applications
  • 1. Applications in Australia (convention applications) where the applicant claims a right of priority
  • 2. Making a claim for priority
  • 3. Examination of applications claiming convention priority
  • 4. Convention documents
  • 5. Cases where multiple priority dates apply
  • 6. Recording the claim
  • 7. Effect on registration of a claim for priority based on an earlier application
  • Part 12 Divisional Applications
  • 1. Divisional applications - general
  • 2. Why file a divisional application?
  • 3. Conditions for a valid divisional application filed on or after 27 March 2007
  • 4. In whose name may a divisional application be filed?
  • 5. Convention claims and divisional applications
  • 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
  • 7. Can the divisional details be deleted from a valid divisional application?
  • 8. Divisional applications and late citations - additional fifteen months
  • 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
  • Annex A1 Divisional Checklist
  • Part 13 Application to Register a Series of Trade Marks
  • 1. Series of Trade Marks - Act
  • 2. Material Particulars
  • 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
  • 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
  • 5. Restrict to Accord
  • 6. Examples of Valid Series Trade Marks
  • 7. Examples of Invalid Series Trade Marks
  • 8. Divisional Applications from Series
  • 9. Linking of Series Applications
  • 10. Colour Endorsements
  • Part 14 Classification of Goods and Services
  • 1. The purpose of classification
  • 2. The classification system
  • 3. Requirement for a clear specification and for correct classification
  • 4. Classification procedures in examination
  • 5. Principles of classification and finding the correct class for specific items
  • 6. Wording of the specification
  • 7. Interpretation of specifications
  • 8. International Convention Documents
  • Annex A1 - History of the classification system
  • Annex A2 - Principles of classification
  • Annex A3 - Registered words which are not acceptable in specifications of goods and services
  • Annex A4 - Searching the NICE classification
  • Annex A5 - Using the Trade Marks Classification Search
  • Annex A6 - Cross search classes - pre-June 2000
  • Annex A7 - Cross search classes - June 2000 to December 2001
  • Annex A8 - Cross search classes from 1 January 2002
  • Annex A9 - Cross search classes from November 2005
  • Annex A10 - Cross search classes from March 2007
  • Annex A11 - Cross search classes from January 2012
  • Annex A12 - Cross search classes from January 2015
  • Annex A13 - List of terms too broad for classification
  • Part 15 General Provision for Extensions of Time
  • 1. When the general provision applies
  • 2. When the general provision does not apply
  • 3. Circumstances in which the Registrar must extend time
  • 4. Grounds on which the Registrar may grant an extension of time
  • 5. Form of the application
  • 6. Extensions of time of more than three months
  • 7. Review of the Registrar's decision
  • Part 16 Time Limits for Acceptance of an Application for Registration
  • 1. What are the time limits for acceptance of an application to register a trade mark?
  • 2. Response to an examination report received within four (or less) weeks of lapsing date
  • Part 17 Deferment of Acceptance
  • 1. Deferment of Acceptance - introduction
  • 2. Circumstances under which deferments will be granted
  • 3. Period of deferment
  • 4. The deferment process where the applicant has requested deferment
  • 5. The deferment process where the Registrar may grant deferment on his or her own initiative
  • 6. Termination of deferment
  • 7. Transitional practice
  • Annex A1 - Deferment of acceptance date - Grounds and time limits
  • Part 18 Finalisation of Application for Registration
  • 2. Accepting an application for registration
  • 3. Rejection of an application for registration
  • Part 19A Use of a Trade Mark
  • 1. Use of a trade mark generally
  • 2. Use 'as a trade mark'
  • 3. Use 'in the course of trade'
  • 4. Australian Use
  • 5. Use 'in relation to goods or services'
  • 6. Use by the trade mark owner, predecessor in title or an authorised user
  • 7. Use of a trade mark with additions or alterations
  • 8. Use of multiple trade marks
  • Part 19B Rights Given by Registration of a Trade Mark
  • 1. The trade mark as property
  • 2. What rights are given by trade mark registration?
  • 3. Rights of an authorised user of a registered trade mark
  • 4. The right to take infringement action
  • 5. Loss of exclusive rights
  • Part 20 Definition of a Trade Mark and Presumption of Registrability
  • 1. Definition of a trade mark
  • 2. Background to definition of a trade mark
  • 3. Definition of sign
  • 4. Presumption of registrability
  • 5. Grounds for rejection and the presumption of registrability
  • Part 21 Non-traditional Signs
  • 1. Non-traditional signs
  • 2. Representing non-traditional signs
  • 3. Shape (three-dimensional) trade marks
  • 4. Colour and coloured trade marks
  • 5. "Sensory" trade marks - sounds and scents
  • 6. Sound (auditory) trade marks
  • 7. Scent trade marks
  • 8. Composite trade marks - combinations of shapes, colours, words etc
  • 9. Moving images, holograms and gestures
  • 10. Other kinds of non-traditional signs
  • Part 22 Section 41 - Capable of Distinguishing
  • 1. Registrability under section 41 of the Trade Marks Act 1995
  • 2. Presumption of registrability
  • 3. Inherent adaptation to distinguish
  • 4. Trade marks considered sufficiently inherently capable of distinguishing
  • 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
  • 6. Trade marks having no inherent adaptation to distinguish
  • 7. Examination
  • Registrability of Various Kinds of Signs
  • 10. Phonetic equivalents, misspellings and combinations of known words
  • 11. Words in Languages other than English
  • 12. Slogans, phrases and multiple words
  • 13. Common formats for trade marks
  • 14. New terminology and "fashionable" words
  • 15. Geographical names
  • 16. Surnames
  • 17. Name of a person
  • 18. Summary of examination practice in relation to names
  • 19. Corporate names
  • 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
  • 21. Titles of other books or media
  • 22. Numerals
  • 23. Combinations of letters and numerals
  • 24. Trade marks for pharmaceutical or veterinary substances
  • 25. Devices
  • 26. Composite trade marks
  • 27. Trade marks that include plant varietal name
  • Annex A1 Section 41 prior to Raising the Bar
  • Annex A2 Flowchart of "Capable of Distinguishing"
  • Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
  • 2. Submissions in rebuttal, amendments and informal information
  • 3. Evidence of use - general requirements
  • 4. Examining evidence - general
  • 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
  • 6. Endorsements for applications overcoming section 41 grounds for rejection
  • Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
  • Annex A2 - Model layout for statutory declaration/affidavit
  • Annex A3 - Model layout for supporting statutory declaration
  • Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
  • Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
  • Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
  • Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
  • Part 24 Disclaimers
  • 1. What is a disclaimer?
  • 2. Request for a voluntary disclaimer
  • 3. Effect of a disclaimer on registration
  • 4. Effect of a disclaimer on examination
  • 5. Amendment of disclaimers
  • 6. Revocation of disclaimers
  • Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
  • 1. Introduction to section 44 and regulation 4.15A
  • 2. Presumption of registrability and the application of section 44
  • 3. Cross Class Search List
  • 4. Similarity of goods and services
  • 5. Similarity of trade marks
  • 6. Factors to consider when comparing trade marks
  • 7. Trade marks with the same priority/filing date
  • 8. Assignment of applications and registrations
  • 9. Grounds for rejection when the citation is in its renewal period
  • Annex A1 - Citing multiple names
  • Part 27 Overcoming Grounds for Rejection under Section 44
  • 3. Amending the goods and/or services of the applicant's specification
  • 4. Negotiation with owner/s of conflicting trade mark/s
  • 5. Filing evidence of honest concurrent use, prior use or other circumstances
  • 6. Removal of the conflicting trade mark
  • 7. Dividing the application
  • Annex A1 - An example of a letter of consent
  • 2. Legal submissions
  • Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
  • 2. Honest concurrent use - paragraph 44(3)(a)
  • 3. Examining evidence of honest concurrent use - the five criteria
  • 4. Other circumstances - paragraph 44(3)(b)
  • 5. Conditions and limitations to applications proceeding under subsection 44(3)
  • 6. Prior use - subsection 44(4)
  • 7. Examining evidence of prior use
  • 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
  • Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
  • Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
  • 1. Trade marks likely to deceive or cause confusion
  • 2. Connotation
  • 3. Deception and confusion as a result of a connotation within a trade mark
  • 4. Descriptions of goods/services
  • 5. International Non-Proprietary Names and INN Stems
  • 6. Names of Persons
  • 7. Phonewords and Phone Numbers
  • 8. Internet Domain Names
  • 9. Geographical References
  • 10. Claims to Indigenous Origin
  • Annex A1 - Table of INN stems
  • Part 30 Signs that are Scandalous and Use Contrary to Law
  • 2. Scandalous signs
  • 3. Use contrary to law
  • Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
  • Annex A2 - Official notice re copyright in the Aboriginal Flag
  • Annex A3 - Defence force prohibited terms and emblems
  • Annex A4 - Major Sporting Events protected words
  • Part 31 Prescribed and Prohibited Signs
  • 1. Prohibited signs - subsection 39(1)
  • 2. Prescribed signs - subsection 39(2)
  • 3. When does a ground for rejection exist under subsection 39(2)?
  • 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
  • 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
  • Part 32A Examination of Trade Marks for Plants (in Class 31)
  • 2. Examination of Plant Trade Marks
  • 2.1 Section 42: Contrary to Law
  • 2.2 Section 39: Prescribed Signs
  • 2.3 Section 41: Capacity to Distinguish
  • 2.4 Section 43: Deception and Confusion
  • 2.5 Section 44: Comparison of Trade Marks
  • 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
  • Annex 1 - Applicable Section of the PBR Act
  • Annex 2 - Applicable Sections of the UPOV Convention
  • Annex 3 - Applicable Sections of the ICNCP
  • Annex 4 - An Example of a PBR Letter of Consent
  • Annex 5 - Case Law Summaries
  • Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
  • Part 32B Examination of Trade Marks for Wines (in Class 33)
  • 2. Examination of Wine Trade Marks
  • 2.2 Section 43: Deception and Confusion
  • 2.4 Section 44: Comparison of Trade Marks
  • 3. Protected Terms in Specifications of Goods
  • Part 33 Collective Trade Marks
  • 1. What is a collective trademark?
  • 2. Application of Act
  • 3. Application for registration
  • 4. Limitation on rights given by registered collective trade marks
  • 5. Assignment or transmission of collective trade marks
  • 6. Infringement of collective trade marks
  • Part 34 Defensive Trade Marks
  • 1. Australian trade marks law and defensive trade marks
  • 2. Requirements for the filing of a defensive trade mark
  • 3. Section of the Act NOT applying to defensive trade marks
  • 4. Registrability of defensive trade marks
  • 5. Grounds for rejection under Division 2 of Part 4 of the Act
  • 6. Grounds for rejecting a defensive application under section 187
  • 7. Evidence required for defensive applications
  • 8. Rights given by defensive registration
  • 9. Grounds for opposing a defensive registration
  • 10. Cancellation of defensive trade marks
  • Part 35 Certification Trade Marks
  • 1. What is a certification trade mark?
  • 2. Certification trade marks and geographical indications (GIs)
  • 3. Sections of the Act NOT applying to certification trade marks
  • 4. The registrability of certification trade marks
  • 5. Rights given by, and rules governing the use of, certification trade marks
  • 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
  • 7. Opposition to the registration of a certification trade mark
  • 8. Variation of rules
  • 9. Assignment of registered certification trade marks
  • 10. Assignment of unregistered certification trade marks
  • 11. Transmission of certification trade marks
  • 12. Rectification of the Register and variation of rules by order of the court
  • Annex A1 - Certification Trade Marks flow chart
  • Part 38 Revocation of Acceptance
  • 1. What is revocation of acceptance?
  • 2. Reasons for revocation
  • 3. Revocation process
  • Part 39 Registration of a Trade Mark
  • 1. Overview of registration
  • 2. Particulars of registration
  • 3. Format of Certificate of registration
  • 5. Date and term of registration
  • 6. Registration fees
  • 7. Registration process
  • 8. Notification of Protection process for International Registrations Designating Australia
  • Annex A1 - Certificate of Registration
  • Part 40 Renewal of Registration
  • 1. What is renewal?
  • 2. Timing for renewal
  • 3. Late renewal
  • 4. Failure to renew
  • Part 41 Cancellation of Registration
  • 1. What is the effect of cancelling a registration?
  • 2. Why is a registration cancelled?
  • 3. Cancellation process
  • Part 42 Rectification of the Register
  • 1. What is rectification?
  • 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
  • 3. Rectification procedures
  • Annex A1 - Flow chart of rectification procedure
  • Part 43 Assignment and Transmission
  • 1. What is assignment and transmission?
  • 2. Timing for assignment
  • 3. Application to record assignment etc
  • 4. Process for assigning all goods and/or services (full assignment)
  • 5. Process for assigning only some goods and/or services (partial assignment)
  • 6. Process for assignment of certification trade marks
  • 7. Transmission of certification trade marks
  • Part 44 Claim of Interest or Rights in a Trade Mark
  • 2. Effect of recording the claim
  • 3. When can the interest be recorded?
  • 4. Recording the claim
  • 5. Amending the record of a claim
  • 6. Cancelling the record of a claim
  • Part 45 Copies of Documents
  • 1. Documents copied by the Office
  • 2. Types of copies requested
  • Annex A1 - Flow chart of production of copies/certified copies
  • Part 46 Grounds for Opposition to Registration or Protection
  • References used in this part
  • 1. What is opposition to registration or protection?
  • 2. The Registrar’s role in an opposition
  • 3. When registration or protection can be opposed
  • 4. Grounds for opposition to registration of national trade marks
  • 5. Grounds for opposition to protection of international trade marks
  • Part 47 Procedures for Opposing Registration or Protection
  • 1. Filing a notice of opposition
  • 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
  • 3. Filing a notice of intention to defend
  • 4. Opposition may proceed in the name of another person
  • 5. Making Convention documents available to opponent
  • Part 48 Removal of a Trade Mark from the Register for Non-use
  • Relevant legislation
  • 1. What if a trade mark is not used?
  • 2. Application for removal/cessation of protection for non-use
  • 3. Opposition to a non-use application
  • 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
  • 5. Grounds on which a non-use application may be made
  • 6. Burden on opponent to establish use of a trade mark
  • 7. Authorised use by another person
  • 8. Use by an assignee
  • 9. Localised use of trade mark
  • 10. Circumstances that were an obstacle to the use of a trade mark
  • 11. Where there is no evidence in support of the opposition
  • 12. Registrar's discretion in deciding an opposed non-use application
  • 13. Registrar to comply with order of court
  • 14. Right of appeal
  • 15. Certificate - Use of a trade mark
  • Part 49 Non-use Procedures
  • 1. Application for removal or cessation of protection of a trade mark for non-use
  • 2. Opposition to non-use application
  • 3. Amendment to notice of intention to oppose or statement of grounds and particulars
  • 4. Notice of intention to defend
  • 5. Opposition may proceed in the name of another person
  • 6. Opposition proceedings
  • Part 51 General Opposition Proceedings
  • 1. Evidence
  • 2. Extension of the period for filing evidence
  • 3. Cooling-Off Period
  • 4. Suspensions
  • 5. Hearing of the opposition
  • 6. Dismissal or discontinuance of proceedings
  • 7. Award of costs
  • 8. Rights of appeal
  • 9. Period in which a trade mark can be registered/protected
  • 10. Guidelines for Revocation of Acceptance of Opposed trade marks
  • 10.1 Revocation of Acceptance of Opposed matters Flowchart
  • 11. Unilateral Communications with Hearing Officers
  • Part 52 Hearings, Decisions, Reasons and Appeals
  • References used in this Part
  • 1. What is a decision?
  • 2. What is a hearing?
  • 3. Is a hearing always necessary?
  • 4. Role and powers of the Registrar in hearings
  • 5. Rights of appeal from decisions of the Registrar
  • 6. Appeals from decisions of the Federal Court etc.
  • 7. Implementation of decisions
  • 8. Service of documents on the Registrar
  • Part 54 Subpoenas, Summonses and Production of Documents
  • 1. Subpoenas
  • 2. Summonsing a witness
  • 3. Production of documents
  • Annex A1 - Consequences of mishandling a subpoena
  • Annex A2 - Format of a summons to witness
  • Annex A3 - Format of notice requiring production
  • Part 55 Costs
  • 1. Legislative Basis
  • 2. Award of costs
  • 3. Applications for an award of costs
  • 4. Determination of the amount of costs
  • 5. Full costs where certificate of use of a trade mark provided to removal applicant
  • 6. Costs recovery
  • 7. Security for costs
  • Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
  • Part 60 The Madrid Protocol
  • 2. International Applications
  • 2.1 General Description
  • 2.2 International Application Form
  • 2.3 Data Entry
  • 2.4 Certifying Process
  • 2.5 Fees for International Applications
  • 2.6 Renewal
  • 3. The Basic Application or Basic Registration (Basic Trade Mark)
  • 4. International Registrations that have Designated Australia
  • 4.1 General Description
  • 4.2 Record of International Registrations
  • 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
  • 4.4 Indexing
  • 4.5 Expedite
  • 4.6 Classification of Goods and Services
  • 4.7 Examination of an IRDA
  • 4.8 Reporting on an IRDA
  • 4.9 Provisional Refusal
  • 4.10 Amendments
  • 4.11 Deferment of Acceptance
  • 4.12 Extension of Time
  • 4.13 Final Decision on Provisional Refusal Based on Examination
  • 4.14 Acceptance
  • 4.15 Revocation of Acceptance
  • 4.16 Extension of Time to File Notice of Opposition to Protection
  • 4.17 Opposition to Protection
  • 4.18 Protection
  • 4.19 Cessation or Limitation of Protection
  • 4.20 Cessation of Protection because of Non-Use
  • 4.21 Opposition to Cessation of Protection because of Non-Use
  • 4.22 Renewal
  • 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
  • 4.24 Change in Ownership of an International Registration
  • 4.25 Transformation
  • 4.26 Replacement
  • 4.27 Customs
  • Part 61 Availability of Documents
  • 1. Availability of Documents
  • 2. Accessing Documents
  • 3. Documents to be made Available for Public Inspection (API)
  • 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
  • 5. Confidential Information in Correspondence
  • 6. Policy in relation to TM Headstart
  • Part 62 Revocation of Registration
  • 1. What is revocation of registration?
  • 2. Prerequisites to revocation of registration
  • 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
  • 4. Circumstances under which registration may be revoked
  • 5. Mandatory revocation
  • 6. Right of appeal: revocation of registration
  • 7. Extension of time
  • 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
  • 9. Registrar must notify Customs if protection of a PITM is revoked
  • 10. Right of appeal: cessation of protection

43.3. Application to record assignment etc

The application to record assignment may be made by the assignee or by the assignor (subsections 107(1) and 109(1) ). Similarly, an application to record transmission may be made by the person transmitting the trade mark or the person to whom it has been transmitted. The application must be in an approved form. It must be accompanied by any prescribed document ( reg. 10.1 ), and be filed in accordance with the Regulations ( subsections 107(2) and 109(2) ).

3.1 Form of application

The application to record assignment or transmission must be in an approved form and should include the following details:

the application or registration number of the trade mark which has been assigned

the name and address of the assignee or the person to whom the trade mark has been transmitted

the address for service of the assignee or the person to whom the trade mark has been transmitted, or

if the assignor or the person transmitting the trade mark makes the application to record the assignment, the address and address for service of that person,

a list of the goods or services to be assigned or transmitted along with a list of the goods or services to remain on the original trade mark if a partial assignment or an indication from the applicant that all the goods and/or services are to be assigned or transmitted if a full assignment. a prescribed document establishing title to the trade mark (see 3.2 ).

There is no fee prescribed for applying to record assignment or transmission. The application and supporting documents may be filed through the online services page or post and should conform with the general filing requirements (regs 21.1 , 21.2 and 21.3 and Schedule 7 ). It is no longer necessary for the application form for assignment to be dated and signed, however the documentary evidence in relation to the assignment, such as a Letter of Assignment or other transfer document must be signed. 

3.2 Prescribed Documents

A prescribed document that must accompany every application is a document that establishes title to the trade mark(s) ( reg. 10.1 ).  It may consist of a:

  • deed of assignment;
  • merger document;
  • sale document;
  • simple letter of assignment;
  • probate document in the case of a deceased owner, or death certificate and copy of last will and testament;
  • legislative instrument of transmission;
  • declaration.

The prescribed document must include the following information:

  • The name and address of the assignee (new owner)
  • The name/signature and position of the assignor (current owner).  If more than one owner, signatures for all co-owners are required.  An agreement or consent from co-owners must be provided if they are not part of the assignment.
  • The trade mark number(s) to be assigned.
  • Clearly state that it is a full or partial assignment.
  • If a partial assignment, clearly show what is staying and what is to be assigned.

3.3 Transmission on death of joint owner

When two or more persons have jointly applied for registration of a trade mark in terms of section 28 of the Act, and the trade mark proceeds to registration, they are registered as joint owners of the trade mark as per subsection 69(3). Unless they have agreed otherwise, joint owners hold their interests as "tenants in common". Therefore, subject to any agreement to the contrary, when one joint owner dies the interest of that person in the trade mark passes to his or her estate.

In accordance with subsection 109(1) the beneficiary of the deceased owner's interest must apply to record the transmission. The proof of title that must accompany the application may be probate of the will (if available) or a copy of the death certificate and last will and testament.

Should the beneficiary assign his or her right to the remaining joint owner(s), an application to record the assignment would be required in addition to the evidence of transmission and the assignment.

Note : If the application to record the transmission is made only in the name of the beneficiary and without an indication of the consent of the other joint owner(s), the other owner(s) will be advised and given 14 days notice of the intention to record the transmission.

3.4 Consent of the ACCC to assignment of a certification trade mark

If the trade mark being assigned is a registered certification trade mark, the owner must, before assigning the trade mark, seek the permission of the Australian Competition and Consumer Commission (ACCC). This also applies to a certification trade mark that is the subject of an application for registration that has been sent to the ACCC under subsection 174.

Documentary evidence of this permission ( reg. 10.1 ) is also a prescribed document for the purposes of paragraphs 107(2)(b) and 109(2)(b) . (See section 6 for details of the process for recording assignment of certification trade marks).

  • Part 35 Certification Trade Marks - 9. Assignment of registered certification trade marks 10. Assignment of unregistered certification trade marks

Amended Reasons