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This deed conveys an assignment of a trade mark by the registered owner or applicant for registration of the trade mark.
The Trade Marks Act 1995 (Cth) provides that a collective trade mark may not be assigned (Section 166) and special provisions apply to assigning a registered certification mark (Section 180). To record an assignment, the document evidencing the transfer of title must be signed by the owner; it is optional for the assignee to have counter-signed (Regulation 10.1).
Assignment may be partial (ie. may apply to some of the goods/services covered by the registration/ application) (Section 106(2)), and it may be with or without goodwill (Section 106(3)).
Recordal of an assignment of a trade mark application is possible (Section 106(1)). It is prudent to record the assignment on the Register promptly after execution of the assignment. A non-recordal of assignment might result in only the registered owner or an authorised user (generally a licensee) having the right to bring an action for infringement.
If a licence to use has previously been granted or there has been a grant of any other third party right (eg. where there are royalty payments or there is a charge, mortgage or other equitable interest), we strongly recommend that you do not use this Deed without first checking to ensure that the assignment does not breach any prior licence or agreement. This is because under that agreement the Assignor is likely to have obligations and these cannot be unilaterally assigned by the Assignor.
Where a third party has rights (eg. as licensee), a deed of novation should be used which will join the third party as a signatory to the assignment/transfer from the Assignor to the Assignee.
This Trade Mark Deed of Assignment includes the following provisions:
3. Assignor's Warranties & Indemnity
4. General Undertakings
5. General Provisions
* Notes to Trade Mark Assignment Deed