43.2. Timing for assignment

A trade mark may be assigned or transmitted when it is either the subject of an application or a registration.

2.1 If assignment of a registered or unregistered trade mark has taken place; then either the assignor or the assignee must apply to the Registrar in an approved form to have the transfer of ownership recorded. Similarly an application must be filed to record transmission of a registered or unregistered trade mark.

2.2 The application must be filed together with documentary evidence that title to the trade mark has been assigned or transmitted (reg 10.1).

2.3 Once the recording of an assignment or transmission of a trade mark has taken place, the assignee or the person to whom the trade mark has been transmitted is taken to be the applicant for registration of the trade mark (s108) or owner of the trade mark for the purposes of the Act (section 110).

2.4 If the assignment or transmission is in full, that is, for all the goods and services, the name of the assignee or the person to whom the trade mark has been transmitted is entered in the Register as the owner of the trade mark in relation to all the goods and/or services and is taken, for the purposes of the Act to be the applicant for the registration of the trade mark.

2.5 If the assignment or transmission is a partial, that is, for only some of the goods and/or services, this will result in the creation of a new application or registration for the partially assigned or transmitted goods and/or services.

In this case the name of the assignee or the person to whom the trade mark has been partially transmitted is entered in the Register as the owner of the new trade mark in relation some of the goods and/or services.

2.6 Details of the assignment or transmission of a trade mark are published (sections 108 and 110).

2.7 If any person is recorded as claiming an interest or right in respect of a trade mark, the Registrar must notify them of any application to record an assignment or transmission of that trade mark (section 111).

• Part 44 Claim of Interests or Rights in a Trade Mark

Note: Although the legislation allows for a trade mark seeking registration to be assigned, care should be exercised in suggesting an assignment to overcome incorrect or erroneous ownership during examination. For example, the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 states at [40]:

Within such a scheme, where the rights of the registered owner extend back to the filing date of the application, it is essential that the initial applicant on the filing date be the owner of the mark. Otherwise, the applicant cannot transfer ownership of the mark by an assignment in accordance with the legislative provisions on and from the filing date… when not in fact the owner of the mark.