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If you are selling your business or merging with another business, you may need to transfer the ownership of your trade mark. The process of transferring ownership is called a trade mark assignment and results in the other business owning your trade mark. Once this is done, you will no longer have ownership of that trade mark. Therefore, you will want to consider a few things before you transfer your trade mark to another business.

This article will explain:

  • issues to consider before transferring your trade mark to another business; and 
  • the process if you do decide to go ahead.

What is a Trade Mark?

A trade mark helps distinguish your business from that of other traders. It can be a word, business name, sound, phrase, smell, logo, shape, picture or even a distinctive aspect of your packaging.

By registering your trade mark, you ensure it is legally enforceable, meaning you will have the exclusive right to use that trade mark for the relevant goods and services. You will also have the right to take action against third parties that make unauthorised use of your trade mark. An unregistered trade mark can be more difficult to enforce than a registered trade mark.

Other benefits of trade mark registration include:

  • visibility – it deters misuse by competitors;
  • reduced costs for future enforcement; and
  • national protection – protection throughout New Zealand.

Before Transferring a Trade Mark 

There are a few things to consider before transferring your trade mark to another business. You need to file certain supporting documents in order to record a trade mark transfer. This includes digital or scanned proof of the new owner’s (assignee’s)  ownership of the trade mark. This can be a deed of sale and purchase, or other proof of assignment such as a deed of trade mark assignment. The transfer document must contain both parties’ signatures and the date. 

If you cannot access or complete these documents, you can submit a statutory declaration stating that the trade mark is owned by a proprietor who is different from the registered owner or the applicant. 

Note that new owners must have a valid address for service in New Zealand.

How to Transfer a Trade Mark to Another Business

To record the change in ownership, you must advise the Intellectual Property Office of New Zealand (IPONZ) of the transfer. This includes filing a request with IPONZ to record the new owner as the registered proprietor of the trade mark. It will also be necessary to provide IPONZ with supporting documentation (such as a deed of assignment).  

Partial Ownership Change

A transfer of a trade mark can be full or partial. For example, say your baking business has expanded and another company wants ownership of your signature cookies, but not the rest of your baking goods. Instead of transferring your whole baking business trade mark over, you would transfer the trade mark only in relation to your signature cookies. 

To undertake a partial transfer, you need to make a Division/Partial Change of Ownership request first. A partial change means the trade mark must first be divided into two or more separate marks, with one or more of these transferring to the new owner(s). This process can be complicated and it is worth having a lawyer assist you.

Key Takeaways 

Before transferring your trade mark to another organisation, ensure you:

  • have prepared the correct documents to file and complete a transfer. This is most commonly a trade mark assignment agreement that both parties have signed; and
  • notify IPONZ as soon as possible regarding the transfer.

If you would like more information about trade marks or intellectual property in general, contact LegalVision’s IP lawyers on 0800 005 570 or fill out the form on this page. 

Frequently Asked Questions

How do you register a trade mark? 

You can register your trade mark by applying to the Intellectual Property Office of New Zealand (IPONZ). You should make sure that someone is not already using a trade mark identical or similar to yours before you do this. Your trade mark application is more likely to be approved if your trade mark is distinctive and unique.

Can I transfer any type of trade mark?

You can transfer any trade mark, whether it is a word, number, letter, business name, sound, phrase, smell, logo, shape or picture.

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