43.1. What is assignment and transmission?

Assignment or transmission of a trade mark refers to the process by which ownership of a registered trade mark or a trade mark whose registration is being sought may be passed from one party to another. The Act requires that the Registrar be advised of this change of ownership as soon as it occurs. This is to ensure that assignments and transmissions of title that have been effected in the marketplace are entered in the Trade Marks Office records at the earliest opportunity, so that these records are an accurate reflection of the real business situation.

Under the Trade Marks Act 1995 the Registrar has no discretion in respect of the recordal of an assignment or transmission. If the application to record complies with the formal requirements and is supported by a document that establishes title to the trade mark, the Registrar must record the change of ownership. (See the decision of the full Federal Court in Transport Tyre Sales Pty Ltd v Montana Tyres Rims And Tubes Pty Ltd 43 IPR 481)

The process of assignment or transmission is different from the process whereby an owner of a trade mark may change their name, while still remaining the same entity.

• Part 9 Amendments and Changes to Name and Address

​​​​​​​1.1 The Act defines assignment in relation to trade marks as meaning assignment by the act of the parties concerned.

1.2 It defines transmission as transmission by operation of law, or devolution on the personal representative of a deceased person, or any other kind of transfer except assignment (section 6).

1.3 The recording of an assignment of a registered trade mark (under section 110) has the effect that the person to whom the trade mark has been assigned or transmitted becomes the registered owner of the trade mark.

The recording of an assignment of a trade mark whose registration is being sought (section 108) has the effect that the recorded assignee becomes the applicant for registration of the trade mark (see section 6).

The recorded assignee is also the applicant for the purposes of an opposition to the application. See Part 46.1 of the Manual

1.4 An assignment or transmission may be full or partial, that is, in respect of all or only some of the goods and/or services in respect of which the trade mark is registered or registration of the trade mark is sought (subsection 106(2)).

1.5 In a partial assignment, the original owner of the trade mark retains the trade mark in respect of some of the goods and/or services in the application or registration and the assignee is assigned the trade mark in respect of the other goods and/or services in the application or registration. A partial assignment can be recorded even if the owner has assigned similar goods and/or services to the assignee. Under the Trade Marks Act 1995, the onus is on the parties to ensure the assignment will not result in public deception or confusion. Therefore the Registrar will not investigate this matter when recording the assignment. However, a partial assignment of a trade mark, which is the subject of an application for registration, could result in cross citations being taken.

Note:  These comments apply equally to transmissions which may also be partial.

1.6 Assignment or transmission may not, however, be partial in relation to use of a trade mark in a particular geographic area (subsection 106(2)).

1.7 Assignment or transmission of a trade mark may occur with or without the goodwill of the business concerned in the relevant goods and/or services (subsection 106(3)).

1.8 A collective trade mark may not be assigned or transmitted (section 166).

1.9 A registered certification trade mark may only be assigned with the consent of the Australian Competition and Consumer Commission (ACCC). The applicant must apply to the ACCC for its consent to the assignment, and must be able to provide evidence of that consent before the Registrar will be prepared to record the particulars of the transfer of ownership (section 180, reg. 16.11). See paragraph 43.6 of the Manual for details of the process for recording assignment of certification trade marks.

1.10 Assignment of an unregistered certification trade mark which has not been examined, or is under examination but not yet sent to the ACCC in accordance with subsection 174 may be recorded by the Registrar without the ACCC's approval. If the application is subsequently found to be in accordance with the Act and there are no grounds for rejecting it, copies of the documentation showing that the transfer of ownership has taken place are sent to the ACCC together with other prescribed documents (paragraph 16.2(c)).

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1.11 An unregistered certification trade mark which is the subject of an application that has already been sent to the ACCC under section 174 may only be assigned with the consent of the ACCC. The Registrar will not record details of a transfer of ownership unless the applicant provides evidence of the ACCC's consent (section 180A and reg 16.10A). For more information see the following parts:

• Part 33 Collective Trade Marks - 5. Assignment or transmission of collective trade marks
• Part 35 Certification Trade Marks -
  
  8. Assignment of registered certification trade marks
  
  9. Assignment of unregistered certification trade marks