Changing ownership

Section 82(2) of the Trade Marks Act 2002 allows for the owner or applicant of a trade mark to assign or transmit ownership of the mark. There is no fee for this service.

Applications to assign or transmit the ownership of a trade mark must be in writing. The Commissioner will accept any written communication that contains all the details required by the Regulations. The Application for Assignment or Transmission will assist you in filing an application to assign or transmit correctly. If you need assistance, please contact us during business hours.

The application must contain:

• A copy of the document of assignment or transmission or other documents acceptable to the Commissioner that provide proof of the assignee’s title to the trade mark, such as a deed of assignment or a sale and purchase agreement. These documents must contain the signature of both parties to the transaction. If neither of these documents is supplied, a statement of case may be accepted. A statement of case should be prepared as a statutory declaration that the trade mark is owned by a proprietor different to the registered owner
  

• The name of the person who assigned or transmitted the trade mark (“the assignor”)
  
• If the assignor has an agent, the agent’s name
  
• The name, address for service, and business or residential address of the person to whom the trade mark is assigned or transmitted ("the assignee.") An address for service must be a postal address in New Zealand, and may be a post office box number or a document exchange box
  
• If the assignee has an agent, the agent’s name
  
• The application or registration number of the trade mark
• A description or representation of the trade mark
• The date on which the assignment or transmission became effective
  
• Whether the assignment or transmission was full or partial. A full assignment takes place when the new owner gains rights to the mark for all goods or services in the specification. A partial assignment takes place when the new owner gains rights to some of the goods or services in the specification
  
• The class or classes or goods and/or services that were assigned or transmitted

• Whether any existing licence agreements will be affected by assignment or transmission of the trade mark
• Confirmation that any licensees have been notified of the ownership change.

The Commissioner will, on proof of the person's title:

• register the assignee as the owner of the trade mark registration in relation to the goods or services in respect of which the assignment or transmission has effect; and
• file the assignment, transmission or other document produced in evidence of title, or a copy of those documents for public record; and
• on completing the assignment, write to the applicant confirming that the assignment or transmission has been completed
• issue a replacement certificate, only where the old certificate is returned at the same time as the request for assignment or transmission is lodged.