60.4.24 Change in Ownership of an International Registration

4.24.1  Relevant Legislation

Madrid Protocol

​​​​​​​Article 9 Recordal of Change in the Ownership of an International Registration

Madrid Protocol Regulations

Rule 27 Recording and Notification of a Change or of a Cancellation; Merger of International Registrations; Declaration That a Change in Ownership or a Limitation Has No Effect

Trade Marks Act 1995

Part 10 Assignment and transmission of trade marks (modified by part 17A)

Trade Mark Regulations

Regulation 17A.2 Definition of change of ownership

Part 17 A Division 9

Trade Mark Regulations

Regulation 17A - Division 9 Change in ownership of international registration

Trade Marks Office Manual of Practice and Procedure

Part 43 Assignment and Transmission

4.24.2  General Description

Under the Madrid Protocol assignment and transmission of a trade mark are known as change of ownership.  

As with national trade marks a change of ownership may be full or partial with regard to the goods and/or services.  Under the Madrid Protocol it is also possible to change the ownership of the trade mark in some or all of the countries designated in the international registration.  

IP Australia has the right to declare that a change in ownership cannot have effect in Australia where it does not meet the requirements of the trade mark legislation.

Existing parts of the Manual apply with regard to the change in ownership of

• collective marks (see Parts 33 Collective Trade Marks and 43 Assignment and Transmission);

• marks with a claim to a right or interest recorded (see Parts 43 Assignment and Transmission and 44 Claim Of Interest or Rights in a Trade Mark).

IP Australia does not require any Proof of Title with regard to the change in ownership of IRDAs or protected international trade marks as the IB has already approved the request.

4.24.3  Change in Ownership of an IRDA or Protected International Trade Mark

When the IB is advised of a change in ownership of an international registration, they record the change and notify all affected designated countries.

4.24.4  Declaration that a Change in Ownership has no Effect in Australia

There will be no impediment to the recording of change of ownership in most cases.  However if the change in ownership relates to:

• a certification IRDA or protected international trade mark, or

• a collective IRDA or protected international trade mark, or

• an IRDA or protected international trade mark with a claim to a right or interest recorded,

IP Australia must notify the IB that it declares that the change of ownership can have no effect in Australia.  Possible ways in which the change in ownership may be able to have effect in Australia must be included in the notification.

4.24.4.1 Certification IRDA or Protected International Trade Mark

When the IB notifies IP Australia that ownership of a certification IRDA or protected international trade mark has been changed, the consent of the ACCC to that change must be gained before the change can have effect in Australia.

The information sheet Certification, Collective and Guarantee Trade Marks includes basic information about the ACCC requirements for change in ownership of certification trade marks.  

Declaration - The declaration to the IB will:

• advise that consent of the ACCC is required before the change in ownership can have effect in Australia, and  

• include contact details for the ACCC as well as the ACCC’s requirements.

4.24.4.2 Collective IRDA or Protected International Trade Mark

As with national collective trade marks (see Part 33.5 Collective Trade Marks) it is not possible to change the ownership of an IRDA or protected international trade mark which is a collective trade mark.

Declaration - The declaration to the IB will:

• advise that under Section 166 of the Trade Marks Act 1995, collective trade marks cannot have a change of ownership.

4.24.4.3 Claim to a Right or Interest Recorded

As with national applications and registrations (see Part 44 Claim Of Interest Or Rights In A Trade Mark) when IP Australia receives notification of a change in ownership of a trade mark that has a claim to a right or interest recorded,

• IP Australia will notify the party whose claim to a right or interest is recorded, and

• allow them two months in which to take court action before the change in ownership is recorded.

• If no court action is notified, the change of ownership is recorded.

Declaration - The declaration to the IB will advise that:

• there is a claim to a right or interest recorded against the IRDA or protected international trade mark, and

• under section 111 of the Trade Marks Act 1995, IP Australia must notify any person, who has such a claim recorded, of the change in ownership, and allow them 2 months to object.

4.24.4.4 Notification that the Change in Ownership can now have Effect in Australia

The IB must be notified that the change in ownership can have effect in Australia when:

• the holder of an IRDA or protected international trade mark which is a certification trade mark provides IP Australia with the written consent of the ACCC to the change in ownership, or

• in the case of an IRDA or protected international trade mark with a recorded claim to a right or interest, notice has been given to the relevant parties and the 2 months allowed has expired without an order from the court preventing the change in ownership having effect in Australia.

4.24.5  Process for Change in Ownership

• Notification is received from the IB of a change in ownership of an IRDA or protected international trade mark.

• If the request is for all goods and/or services on the IRDA or protected international trade mark, it is a full change in ownership.  If the request is only for some of the goods and/or services, it is a partial change in ownership. When a partial change of ownership occurs another trade mark file and number will have to be created as with partial national assignments.