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A trade mark is a sign that distinguishes your business from another. It may be your business name or logo. Although it is intangible, a trade mark is an asset in the same way your machinery or stock is an asset. This means you can buy or sell trade marks. Therefore, there may come a time when you want to relinquish your trade mark ownership, such as when you want to sell your business. You can do so through an assignment. For some guidance, this article will go through five steps for changing trade mark ownership in New Zealand.

1. Confirm Your Goals

When you transfer your trade mark ownership, you will need to assign your intellectual property rights in that mark to another person or entity. An assignment is a legally binding process, so you must be sure it is the avenue you want to take. Depending on why you want to relinquish your ownership rights, other options may be more appropriate.

For example, licensing is a different form of change in control, where you license the use of your trade mark to other people. They can use or commercialise your trade mark according to your set terms, and you may receive ongoing royalties in return. You still retain ownership rights, but they gain access to your trade mark with your permission.

Assignment can be useful if you wish to receive a lump sum for your trade mark and do not want to use it anymore. On the other hand, licensing may be appropriate if you want to continue to receive an income from that mark as part of your branding without commercialising it yourself. Weigh up these factors, and decide what is right for your business.

2. Confirm What Your Trade Mark Covers

Once you are certain that you wish to assign your trade mark, you need to make clear to the other party both the:

  • exact nature of your trade mark; and
  • goods and services it applies to.

This process is to ensure that they understand what they are getting and to avoid any future misunderstandings. If you only assign part of your trade mark ownership to another party, identifying its scope becomes especially important.

For example, say that you own a trade mark that is registered in three classes of goods. However, you only want to assign the ownership rights in one of those classes to the other party. Therefore, you need to confirm with the other party what that class is and set this out in your assignment documentation. Additionally, you may need to divide your trade mark registration for this process.

3. Develop and Negotiate an Assignment Agreement

Once you have clarified the scope of your trade mark ownership, you need to document this in an appropriate assignment agreement. This is a binding legal document that will transfer your trade mark ownership to the other party. It needs to be:

  • signed by all parties; 
  • dated; and
  • witnessed.

Your assignment agreement should contain all of the critical points of the agreement, including:

  • who each of the parties are;
  • the parties’ ownership statuses;
  • any definitions of intellectual property;
  • details of any employment context;
  • whether this is an ongoing assignment of intellectual property rights;
  • warranties and indemnities; and
  • confidentiality provisions.

All parties should receive legal advice before signing an assignment agreement or other similar contract. Your assignment agreement may already be within a sale of business agreement, but you must ensure this is the case in advance.

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4. Prepare Documentation for Submission

Once you have an appropriate agreement finalised, you will need to provide this documentation as evidence for IPONZ. Appropriate documentation should include the signature of both parties as mentioned above and the date on which the assignment took effect. Some common forms of documentation include a:

  • deed of assignment;
  • letter of assignment; or 
  • sale and purchase of business agreements.

If you do not have any of these documents, you may use a statutory declaration notifying IPONZ of the change of ownership. These prove that the new owner legally owns the title for the relevant trade mark. If you do not submit this evidence to IPONZ, the assignment will not be complete. 

Additionally, you will need to prepare a digital or scanned version of this document to submit online.

5. Inform IPONZ of the Change of Ownership

You will submit this prepared documentation through IPONZ’s online portal, which you will also use to notify them of the ownership change. You will need to fill out a form with the details of the assignment and proof of the exchange. Details for this form will include the:

  • name of the assignor (the previous owner of the trade mark);
  • name and address of the assignee (the new owner);
  • details of any agents;
  • trade mark registration number;
  • assignment’s application date; and
  • goods and services assigned if it is only a partial assignment.

Key Takeaways

You can change trade mark ownership through an assignment, but you will need to make sure you have the appropriate documentation when doing so. If you are assigning a registered trade mark, you will also need to notify IPONZ of the change of ownership. For more information or help with changing your trade mark ownership, LegalVision’s IP lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a sign used to distinguish your business from another. It is a form of intellectual property. Examples include your business name and logo.

How can I change who owns my trade mark?

You can transfer trade mark ownership rights to another party through an assignment. However, you will need an appropriate agreement detailing this, and you will need to notify IPONZ of the change in ownership.

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