Home – New Forums Starting your journey Some IP advice pls

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  • #987223
    bees
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    Hi everyone,

    I trademarked my business last year as a sole trader using my ABN. It’s been accepted and payment is due in the next month or so.

    In the meantime I’ve changed my business structure to a discretionary trust. Does anyone know if I can keep the IP under my old ABN or whether I need to change it to the ABN allocated to the trust?

    Thanks in advance,

    Janine

    #1161701
    Petru
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    bees, post: 186851 wrote:
    Hi everyone,

    I trademarked my business last year as a sole trader using my ABN. It’s been accepted and payment is due in the next month or so.

    In the meantime I’ve changed my business structure to a discretionary trust. Does anyone know if I can keep the IP under my old ABN or whether I need to change it to the ABN allocated to the trust?

    Thanks in advance,

    Janine

    Hi Janine,

    If you’re business structure has changed. Eg from Sole Trader to Company or Trust as you have changed to. You will need to issue a new ABN number under that Structure. You may use your ABN for as many businesses as you like as long as it is under the one structure. so if you had 5 different businesses which are sole trader businesses you may use the same ABN. to answer your question, In your situation you will need to issue a new one.

    Regards,
    Petru

    P.T Networx Australia

    #1161702
    bees
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    Thanks Petru, I do have a new ABN. I”m just unsure as to whether I need to alter the trademarks to reflect the new business structure/ABN or I’m fine to leave them registered under my old ABN. I’m not cancelling this, but I’d hate to find down the track that my IP is not protected through some technicality such as this.

    #1161703
    Petru
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    Hmm…I see what you mean. The conflict between a trademark and the Business ABN is something I’m unsure about. I read your question a little different.

    I think the best thing to do is contact IP Australia and ask them if you can update the ABN on the trademark. They might be able to update it without any additional Payment or registration.

    You would need to do the same for your .com.au domain, assuming you have one.

    #1161704
    bees
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    Good idea, I’ll drop them a line. I didn’t even think about my domain, thanks for the reminder.

    #1161705
    JacquiPryor
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    Hi Janine,

    Sorry for the late chime in but I hope this helps.

    You (personally) can continue to own the trademark.

    If you applied for the trademark in your own name, it’s actually not likely you included your ABN in the application form. So, it’s simply you that owns the trademark.

    If you continue to own the trademark in your name, but someone else uses it (such as a company you may have set up as trustee for the trust), then you should have a licensing agreement in place between you (the trademark owner) and the user (licensee). If the owner of a trademark does not actually use the mark, then it could be removed for non-use. By having this licensing agreement in place, and assuring you keep on top of quality management over the use of the trademark by the company then you should be right.

    Alternatively, you cannot simply update the ABN on the trademark. You could assign the trademark to the new entity. (Note: a Trust itself cannot own a trademark, the rights to do so will fall with the trustee).

    I hope this helps.

    #1161706
    bees
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    Thanks Jacqui, that’s great advice. And way more than I managed to glean from the helpdesk at IP Australia.

    So in my situation, we’ve not set up a corporate trustee. It’s a discretionary trust, with me as sole trustee. Can I continue to use the trademark as it is without the need for licensing?

    Thanks for your help,

    Janine

    #1161707
    JacquiPryor
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    Hi Janine,

    In theory yes.
    However, it may still be possible – if you wanted to – to update the ownership still so it reads “Janine ATF Janine’s Trust” so that it is recorded that you are acting, in your ownership of the trademark, on behalf of the Trust rather than simply as yourself if that makes sense.

    Without going into all the waffle that’s put out there about Trustees/Trusts and ownership of trademarks etc, the manual that is followed by IP Australia says:

    “It is the trustee, “as trustee of the X trust” who should be specified as the applicant. The trustee will be bound by its common law and equitable duties, as well as the terms of the trust deed, to deal with the property of the trust (including any trade marks) appropriately.”

    So, I would suggest in this case it’s probably more appropriate to update ownership to reflect you as trustee for the trust. As you are the only person involved you could do this by a simple ‘letter of assignment’, which is filed with IP Australia. A letter to them that includes:

    -The name and address of the assignee (new owner)
    – The name/signature and position of the assignor (current owner).
    – The trade mark number to be assigned.
    Clearly state that it is a full or partial assignment.
    If partial assignment, clearly state the goods and/or services to be assigned

    If you want to send me an email to [email protected] – or a PM with your email address in it, I am happy to give you a template of an appropriate letter of assignment that you can use for filing with IPA.

    {EDIT} – The above will not affect the acceptance of your trademark or result in any re-filing or additional cost… the trademark itself progresses as normal with the transfer in ownership going on at the same time.

    #1161708
    bees
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    Thanks Jacqui, I’m just returning to this now! Thanks for your advice and pointers in the right direction. There is a simple application to reassign the trademark on the IP Australia website, would that be all that is needed?

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