Assignment and Transmission of Trade Marks

Whether you’re selling your business, rebranding, or restructuring ownership, transferring a trade mark isn’t just a handshake deal, it involves a formal process and accurate record-keeping with IP Australia.

What exactly is assignment and transmission?

Assignment of a trade mark happens when ownership is transferred voluntarily between two parties, usually by way of a contract or sale. Think of it like selling or gifting the brand itself. For example, if one business sells its brand to another, the trade mark (along with the goodwill, if applicable) can be assigned to the buyer.

Transmission, on the other hand, refers to transfers by operation of law. This could include inheritance after a trade mark owner passes away or transfers that result from legal restructuring like mergers, bankruptcy, or receivership.

In both cases, the change must be recorded with IP Australia to ensure the correct owner appears on the public record.

When does assignment or transmission apply?

It generally happens in situations like-

• Business acquisitions or mergers
• Rebranding and asset transfers
• Franchise restructurings
• Inheritance and estate transfers
• Company de-registrations and IP migrations

Whether you’re transferring a registered trade mark or one that’s still pending registration, you need to go through the proper channels to record the new ownership.

Full and partial assignment

Not all assignments are equal. You can assign-

• All goods and services under a trade mark (known as a full assignment), or
• Only certain goods or services (a partial assignment)

For instance, if your trade mark covers both cosmetics and clothing, and you’re selling off just the cosmetics arm, a partial assignment would allow you to transfer that part of the trade mark while retaining the clothing rights. Under Australian law, however, you can’t assign a trade mark based only on geographic region. Assignments must relate to goods and services, i.e. not territory.

What does the process involve?

To record an assignment or transmission with IP Australia, a formal application must be submitted, usually with supporting documents that establish the transfer of title. This might include-

• A deed of assignment or contract
• A probate document (for transmission through inheritance)
• Evidence of ACCC consent (in case of certification trade marks)

Once IP Australia receives the application, they’ll review and, if everything checks out, update the Register to reflect the new owner.

As part of our service, we-

• Draft or review your assignment deed
• Prepare and lodge the application
• Liaise with IP Australia and other stakeholders (e.g., licensees, partners)
• Ensure compliance with formalities, especially for complex scenarios like partial assignments or certification marks

What if there are other interests recorded?

Sometimes, a trade mark has other people claiming interests, like licensees, investors, or someone who’s already lodged an assignment that hasn’t been finalized. In these cases, IP Australia may delay the recordal and issue notifications.

If an objection is raised, or a third party wants to stop the assignment, they need to get a court order within two months. During this time, the process is paused. This step can be tricky to manage without proper communication, especially if your brand is part of a larger transaction.

Certification and Collective Trade Marks

A regular trade mark can be freely assigned or transmitted, but things are different with certification and collective marks.

• Collective trade marks can’t be assigned at all under Australian law.
• Certification trade marks can only be assigned with prior approval from the ACCC (Australian Competition and Consumer Commission).

This is because certification marks aren’t ordinary brands, i.e. they’re marks that show compliance with specific standards. The ACCC oversees these to make sure the new owner is still capable of managing and enforcing those standards. If your business owns or plans to acquire a certification trade mark, our firm can assist with obtaining ACCC consent and guiding you through the approval process.

That said, Under the Trade Marks Act 1995 (Cth), the transmission of certification trade marks, whether registered or pending, does not require consent from the Australian Competition and Consumer Commission (ACCC). While Sections 180 and 180A mandate ACCC approval for assignment of certification marks, no such reference is made to transmission, either in the Act or Regulation 10.1 (as amended). Transmission typically occurs by operation of law, such as through privatization. The following should be considered-

• Transmission applications in the approved form, with complete details and evidence, must be recorded, without requiring ACCC consent.
• If filed prior to ACCC referral under section 174, ownership changes will be recorded and documentation sent to the ACCC with other prescribed materials (reg 16.2).
• If filed after acceptance but before registration, the ownership change is recorded, with no statutory obligation to notify the ACCC during or after this stage.

Common Mistakes to Avoid

Here are some pitfalls to avoid to make the process smooth-

• Delaying recordal: Waiting too long to notify IP Australia can result in outdated records, which might harm enforcement or licensing rights.
• Incorrect documents: A missing signature, an incomplete assignment deed, or vague goods descriptions can lead to rejection.
• Incorrect ownership at filing: If you filed a trade mark in the wrong name, assigning it post-filing won’t always fix the issue (especially in light of the Pham Global case).
• Assuming trade mark transfer is automatic: Even if you’ve sold the business, the trade mark doesn’t automatically transfer unless you formally record it.

We’re here to help you avoid all of this.

How we can support you?

Whether you’re a small business owner selling your brand, a franchisor expanding operations, or a lawyer advising a client, we can-

• Draft, review, and execute assignment or transmission agreements
• Handle partial assignments across complex portfolios
• Manage certification mark assignments and ACCC consent
• Liaise with IP Australia and ensure compliant recordal
• Resolve objections and protect your interests throughout the process

Trade mark assignment and transmission are powerful tools for growing or reorganizing a business, but they come with legal formalities that can’t be skipped. Done right, they protect your brand and its value. Done poorly, they can lead to ownership disputes or loss of rights.

Need help recording a trade mark transfer? Get in touch with our team today and we’ll handle the paperwork, compliance, and communication, so you can focus on the bigger picture.