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  • #972906
    lj
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    Hi there,

    I have just realized that the person that has sold me a website / business was in the process of registering the name for trademark. In the course of our transaction he did not mention this, but obviously I have found out. I’m not sure if he hid it intentionally, or was an honest slip of the mind..

    So I am going to ask him about it, and was hoping to arm myself with information on the general ease and process of transferring the trademark application to my name, and was hoping some one here might be able to help?

    I will dispute the trademark if he does not transfer / cancel it, but I don’t want to cause a rift in our relationship as we are still going through the hand over process, but obviously I want to try to protect my asset and business.

    Any help or advise is welcome! Thanks in advance! L

    #1058489
    victorng
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    Hi L,

    Assigning a trade mark is very straightforward. You’ll need an assignment letter or some other proof of title. Send that along with a request to record the assignment to the Trade Marks Office (you can find a form for the recordal on the IP Australia website).

    Cheers,
    Victor

    #1058490
    JacquiPryor
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    Hi LJ,

    As Victor said, it can be straight forward – so long as the other party is willing to sign off on the letter of transfer or assignment.

    If they are not willing to do so, it can be trickier. In your actual contracts relating to the sale of the business, is there any reference to the sale including the “name” or Intellectual Property or similar? If so, in some cases this may be sufficient to attach to the request to record the ownership transfer with the government office. You will see when you download the form as per Victor’s post from IP Australia’s site there is space to tick that you are attaching “other” documents to prove you are the new/entitled owner of the trademark.

    In the event the contract of sale doesn’t reference the trademark or name in terms of being a part of the sale; and the other party doesn’t sign over the rights – be mindful that there are certain time frames in which you can officially ‘object’ to the trademark becoming registered. If you need more info on the time frames – send me a message with the trademark details and I can let you know the dates/period for opposition etc.

    All the best!

    #1058491
    JacquiPryor
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    PS – The form to assign with IP Australia includes a fillable “letter of assignment” for you and the other party to complete so you can be sure all the appropriate information has been included and recorded.

    #1058492
    Kennethti
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    Just to further Victor and Jacqui’s comments, the link to IP Australia’s forms appears as follows:

    http://www.ipaustralia.gov.au/resources/forms_trademarks.shtml

    I would suggest you a letter (or if you want to go all out, a contractual document of some sort) from your vendor stating clearly that the trade mark is to be assigned to you once registered.

    If you have a solicitor assisting you with the deal, have a chat with them about the situation.

    #1058493
    lj
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    Great, thank you so much everyone! Unfortunately nothing was mentioned in the selling of the business terms, but if worse comes to worse I will dispute it, as now with out the business I don’t really seeing them as having a leg to stand on!

    Hopefully armed with this information that the transfer process can be easy, I can get it sorted without hassle.

    Thanks again, you lot are the beez kneez!

    :)

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