Trade Mark Assignments and Transmissions in New Zealand

A trade mark is one of the most valuable assets your business will ever own. It is the legal and commercial heart of your brand identity, your goodwill, and your reputation. Like any other piece of valuable property, such as real estate or company shares, a trade mark can be bought, sold, licensed, or passed on as part of an inheritance or corporate restructure.

This legal transfer of ownership is known as an assignment (a deliberate transfer, such as a sale) or a transmission (a transfer by operation of law, such as on death or bankruptcy).

However, simply signing a Sale and Purchase Agreement is not enough. The New Zealand Trade Marks Act 2002 requires that any change in ownership be officially recorded on the trade mark register. The Intellectual Property Office of New Zealand (IPONZ) has stated that it is critical to advise them of a change of ownership as soon as it occurs, so that the register “is an accurate reflection of the real business situation”.

An out-of-date register can lead to problems, including:

• An inability to enforce your rights against an infringer.
• Difficulties in securing investment or financing against your brand.
• Fatal flaws in any future sale or licensing of your business.
• Official communications, such as critical renewal deadlines, being sent to the wrong owner, leading to the accidental loss of your registration.

Assignment vs. A Simple Change of Name

The first and most common pitfall businesses encounter is confusing a “change of name” with an “assignment.” Filing the wrong request will result in its rejection by the Office.

As your legal representatives, our first step is to analyze the nature of your transaction to determine the correct legal path.

A Change of Name is a simple correction that we manage on your behalf. This is the correct procedure only if the legal entity that owns the mark remains the same but has simply changed its name. For example, if “Acme Holdings Limited” files for a legal name change and becomes “Global Brands Limited,” the company itself (and its company number) is unchanged. In this instance, we submit a “change of name” request, often supported by the Certificate of Change of Name.

An Assignment is a transfer of the asset from one legal entity to another. This is true even if the two entities are closely related. Common examples of assignments include a founder transferring a trade mark from their personal name to their newly formed company, a parent company transferring a mark to one of its subsidiaries as part of a corporate restructure, a liquidator transferring a mark from a dissolved company to a new owner or an outright sale of the brand to an entirely unrelated third party.

In all these cases, the legal “person” who owns the mark has changed, and a formal assignment is the only correct procedure.

Providing Proof of Title

When we file an application to record a change of ownership, the Commissioner of Trade Marks has no discretion. If the application is filed correctly and is supported by a document that establishes clear title, the Commissioner must record the change.

The entire process is built around ensuring this documentation is. The onus is on the applicant to provide this proof, and any defect in the documents will stop the transfer.This “proof of title” is the legal instrument that proves the transfer occurred.

Acceptable proof of title includes:

• A Deed of Assignment: This is the gold standard. It is a formal legal document created specifically for the purpose of transferring intellectual property. We can draft this document to ensure it is compliant.
• A Sale and Purchase Agreement: A pre-existing business agreement can be used, but it must be sufficient. We will review it to ensure it meets all requirements.
• A Certificate of Amalgamation or Merger: For corporate restructures, this official certificate is often the required proof.

To be acceptable, the document must, at a minimum, show the full name and address of both parties (the assignor and the assignee) and be signed and dated by the assignor (the original owner). IPONZ helpfully accepts redacted versions of sensitive commercial agreements, as long as the parties, the intent to transfer, and the trade marks themselves are clearly visible.

Full or Partial Assignment

A trade mark is a flexible asset; it does not have to be transferred as a single, monolithic block. The Act allows you to transfer your mark in two distinct ways, and we can provide strategic advice on which is best for your transaction.

Full Assignment (All Goods & Services) This is the most common and simple transfer. You assign your entire trade mark registration, including all the goods and services it covers, to a new owner. We manage this by filing a formal “change ownership” request.

Partial Assignment (Some Goods & Services) This is a far more complex and powerful strategic maneuver. It allows you to “carve up” your registration and sell off only a part of it.

For example, you may have a single trade mark registration for “ZEPHYR” that covers both “Class 25: Clothing” and “Class 29: Processed Meats.” If you decide to sell your food division, you can use a partial assignment to transfer the “ZEPHYR” mark to the new owner, but only for “Class 29: Processed Meats.” You would retain ownership of the mark for “Class 25: Clothing.”

This is filed as a “Division/Partial Change of Ownership” request. This action physically splits your registration, i.e. the new owner receives a new trade mark registration (a “child” application) for the goods they have acquired. That said, this new registration retains the original filing date and priority of your “parent” registration.

This process is technically complex, as the deed of assignment must perfectly list the specific goods and services being transferred, and this must match the technical application for division exactly. Our firm has the expertise to manage this precise legal and procedural alignment.

The Formal Transfer Process

When you engage our firm to manage a trade mark transfer, we handle every detail from start to finish. We prepare the formal application, which must include:

• The name of the assignor (the original owner).
• The full legal name, address for service, and business address of the assignee (the new owner).
• The application or registration number of the trade mark.
• The effective date of the transfer.
• A clear statement of whether the assignment is full or partial.
• If partial, a precise list of the goods, services, and/or classes being transferred.
• A full, unredacted copy of the proof of title (Deed of Assignment or agreement) for the Commissioner’s review.

Once the Commissioner has reviewed our documentation and is satisfied with the proof of title, they will officially record the change in ownership and confirm with us that the assignment is complete.

Rescuing “Lost” Brands

What happens if a company is dissolved or struck off the New Zealand Companies Register, but its valuable trade mark registrations were never transferred? This is a common and disastrous oversight.

Those trade mark assets are not free for anyone to claim. They are considered bona vacantia (ownerless goods) and automatically vest in the Crown by law.

If you are a former director, shareholder, or a third party who wishes to acquire these “lost” marks, a simple assignment is impossible because the owner entity no longer exists. The only way to recover the asset is to petition The Treasury to have the Crown transfer the registration to you.

This is a highly specialized and complex legal procedure that our firm is equipped to handle. We will act as your representative, dealing directly with The Treasury’s Legal Group. This process requires the submission of a substantial body of evidence, which we will prepare, including:

• A formal application for transmission.
• A detailed Statutory Declaration from a former director or officer of the removed company, explaining the circumstances of the dissolution.
• An indemnity in favor of the Crown.
• A letter from the Companies Office certifying the removal date and other key details.
• Written consent from all former shareholders consenting to the transfer.

This is an intricate process, but it is often the only way to rescue a valuable brand that has been inadvertently vested in the Crown.

Why work with us?

Finally, when our firm records an assignment on your behalf as the new owner, we also file to become your official agent on record. This is a vital part of the service. It ensures that all future official correspondence for your newly acquired asset, most importantly, all critical renewal deadlines are sent directly to our firm. We become the new legal custodians for your brand, ensuring its protection is never compromised.

Your trade mark portfolio is a living asset. Whether you are acquiring a new brand, selling a product line, or reorganizing your corporate structure, the legal title must be perfectly maintained. Contact our intellectual property team today to ensure your trade mark assets are secure, accurate, and fully enforceable.

Contact us today for a free consultation.