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. 

• Part 2 General Filing Requirements

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