20 Assignments and transmissions

An application may be made through our trade mark application service, which is available everyday, 24 hours a day.

IPONZ online services provide secure and immediate acknowledgement of your filing.

Read further information about our online services.

There is no fee for an assignment or transmission of a trade mark application or registration.

A person to whom title to a trade mark is assigned or transmitted must apply to the Commissioner to register their title to the application if assignment or transmission is before the actual date of registration.

An application for the assignment or transmission of a trade mark application must be in writing ¹¹ on the online form and contain the following information:¹²

• The name of the assignor of the trade mark;
• If the assignor has an agent, the agent’s name;
• The name, address for service in New Zealand, and business or residential address of the assignee;
• If the assignee has an agent, the agent’s name;
• The application number of the trade mark;
• A description or representation of the trade mark;
• Whether the assignment or transmission was full or partial;
• The date on which the assignment or transmission became effective:
• The class or classes that were assigned or transmitted;
• In the case of the assignment or transmission of only some of the goods or services within a classification, a statement of the goods or services assigned or transmitted;
• A copy of the document of assignment or transmission or other documents acceptable to the Commissioner that are proof of the assignee’s title to the trade mark;
• If the assignment or transmission has resulted in the cancellation or amendment or registration of a licensee, a statement that the licensee has been notified of the assignment or transmission.

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

• accept the change the name of the applicant on the trade mark application;
• on completing the assignment, confirm with the applicant that the assignment or transmission has been completed.
  

Footnotes

¹¹ See regulation 145 of the Trade Marks Regulations 2003.

¹² See regulation 146 of the Trade Marks Regulations 2003.

An application for the assignment or transmission of a trade mark registration must be in writing¹³ and contain the following information:¹⁴

• The name of the assignor of the trade mark;
• If the assignor has an agent, the agent’s name;
• The name, address for service in New Zealand, and business or residential address of the assignee;
• If the assignee has an agent, the agent’s name;
• The registration number of the trade mark;
• A description or representation of the trade mark;
• Whether the assignment or transmission was full or partial;
• The date on which the assignment or transmission became effective:
• The class or classes that were assigned or transmitted;
• In the case of the assignment or transmission of only some of the goods or services within a classification, a statement of the goods or services assigned or transmitted;
• A copy of the document of assignment or transmission or other documents acceptable to the Commissioner that are proof of the assignee’s title to the trade mark;
• If the assignment or transmission has resulted in the cancellation or amendment or registration of a licensee, a statement that the licensee has been notified of the assignment or transmission.

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
• on completing the assignment, confirm with the applicant that the assignment or transmission has been completed

Footnotes

¹³ See regulation 145 of the Trade Marks Regulations 2003.

¹⁴ See regulation 146 of the Trade Marks Regulations 2003.

An assignment of a registered trade mark requires proof of title to the satisfaction of the Commissioner.

The document may be filed as an original or a copy. Original deeds of assignment or transfer documents will be returned once the filing date has been established. A copy of the document of assignment or transmission is acceptable as proof of the assignee’s title to the trade mark and does not need to be certified.

The proof of title document should show the full name and address of both parties, the trade mark being transferred and should be signed and dated at least by the current owner.

Where a partial assignment or partial transmission is sought, the proof of title document should also list the goods and services that are being assigned or transmitted. This must agree with the list stated in the application to record.

¹⁷Where an agent makes an application for the assignment or transmission of a trade mark on behalf of an assignee, an authorisation of agent is required from the assignee.

If the agent requesting the recordal of the assignment or transmission is new they will need to update the agent authority. Where the agent is only authorised to execute the recordal of the assignment and not to be entered as the agent for the trade mark, then this should be made clear on the application for assignment or transmission.

Footnote

¹⁷ Amended in Practice Guideline Amendment 2004/02, Information For Clients, Issue 31: 30 June 2004.

¹⁸Where a company has been removed from the New Zealand Companies Register and its’ trade mark registration was not assigned (whether by deed or by operation of law) to another person immediately prior to the company’s removal, the registration is prima facie bona vacantia and vests in the Crown by virtue of section 324 of the Companies Act 1993. As the owner of the trade mark registration no longer exists as a legal entity, it is not able to assign the ownership of the trade mark registration to an interested party.

Where the ownership of the trade mark has vested in the Crown, it is possible to request the Crown to transfer ownership of the registration. The Treasury is the government agency that deals with requests for the Crown to deal with bona vacantia property. In particular, The Treasury’s Legal Group advises on such requests.

To record such an assignment, IPONZ requires:

• A completed application to record a transmission under s82(2) of the Act, to account for the transmission of the registration from the Company to the Crown and from the Crown to the interested party; and
• Supporting documentation including copies of any documents and evidence required by Treasury.

The Treasury will advise of any documents and evidence required to action a bona vacantia request on a case by case basis. However, in relation to the assignment of a trade mark to an interested party, the following documents may be required by The Treasury:

1. A Statutory Declaration by a Director of the company (or Public Accountant, Solicitor or Company Secretary) at the time of removal from the register:

• setting out the facts about the registration;
• setting out the circumstances surrounding the removal from the register without first transferring the registration; and
• deposing to the effect that the Company held the registration in its own right and not on trust for any other body corporate or any other person

2. An application by an interested party requesting the Crown to deal with the matter as bona vacantia pursuant to section 324 of the Companies Act, together with an indemnity from the appropriate person (usually the interested party) in favour of the Crown indemnifying the Crown in respect of all or any liability that may be incurred by the Crown in respect of all actions taken in transferring the ownership of the trade mark registration.

3. A letter from the Companies Office certifying that the company was dissolved, the section of the Companies Act under which the company was removed from the register, the date of removal and the reference to its publication in the Gazette (if this was done). The certificate should also state that the company has not been restored to the Register.

4. A photocopy of the extracts from the Trade Marks Register duly certified as being a true copy of the originals.

5. Written consent from the Shareholder/s at the time the company was removed, consenting to the transfer of the ownership of the trade mark registration to the interested party.

Please note that the Crown is entitled to recover their costs and may require payment in advance. Any person wishing to pursue this option is expected to deal directly with The Treasury. For more information, email information@treasury.govt.nz.

Footnotes

¹⁸ Practice Guideline Amendment 2007/03, Intellectual Property Office Newsletter, 1 August 2007.