A trademark registration grants exclusive rights in the trademark to use, license or sell the trademark within Australia for the goods and services for which it is registered. This means the owner of a registered trademark may prevent others from using the mark or a deceptively similar mark in relation to the same or similar goods or services.
Licenses concerning registered trademarks do not need to be recorded to be effective, and there is no specific provision allowing recordal on the Trade Marks Office Register. However, it is important for trademark owners to be able to demonstrate that they are exercising financial and/or quality control over the use of their trademarks in any licensing arrangement to ensure that it does not become vulnerable to removal for non-use.
The owner of a registered trademark may assign the registered trademark to another person. The assignment may be partial so that it applies to only some of the goods and/or services in respect of which the trademark is registered. However, the assignment may not be partial in relation to the use of a trademark in a geographical area. Further, the assignment may be with or without the goodwill of the business concerned in the relevant goods and/or services.
With respect to unregistered trademarks, although capable of being assigned or licensed, the Full Court of the Federal Court of Australia reconfirmed in April 2020 that it is not possible to assign or license unregistered trademarks without the assignment of the underlying goodwill of the business.