Look after your trade mark right to the end

01 August 2008
Trade mark owners who do not assign their trade marks before their company ceases to exist will lose ownership of their trade marks to the Crown.

Many companies are incorporated in New Zealand but they do not always withstand the test of time. 

Companies are wound up, struck off, liquidated or placed in receivership for many different reasons. But while they are trading, many of these companies own assets like plant, stock and land as well as intellectual property rights like a trade mark. 

Before a company ceases to exist, its owners (or the liquidator or receiver) usually sell or dispose of the company’s brick and mortar assets. But intangible assets like registered trade marks are often forgotten.

This situation may sound unusual. But it is not. It happens more often that you think. The owners of company that ceases to exist might later revive the business and start trading under a new name. A brand name that was used successfully to market a product in the past might still appeal for the same or a similar product at a future time.

If a company is removed from the official companies register and did not transfer its registered trade marks before the company ceased to exist, the registration is considered bona vacantia and ownership vests in the Crown. But often, the fact that ownership of the trade mark has changed only comes to light many years after the company has been struck off. 

The company, as the owner of the trade mark registration no longer exists as a legal entity, so it is not able to assign the ownership of the trade mark registration to another interested party.

If the original owner wants its registration back or if another party sees value in the trade mark, it can apply to the Crown for the trade mark to be transferred.  Treasury is the government agency that deals with requests for the Crown to deal with bona vacantia property.

An alternative would be to file a new trade mark application but there can be traps with this so expert advice should be sought.

To record a transfer from the Crown, the Intellectual Property Office of New Zealand needs a record of transmission of the trade mark registration from the ceased company to the Crown and from the Crown to the other interested party. Other supporting documents will need to be filed including copies of any documents and evidence Treasury might request.

Treasury requests documents and evidence it needs to action a bona vacantia request on a case by case basis.

These documents are likely to include:

  • 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 about the removal of the company from the register and why the registration was not transferred
  • confirming the company held the registration in its own right and not on trust for any other body corporate or any other person
  • an application by the other interested party asking the Crown to deal with the matter as bona vacantia, with an indemnity from the interested party to the Crown for all or any liability that may be incurred by the Crown for all actions taken in transferring the ownership of the trade mark registration
  • a letter from the Companies Office stating the company was dissolved
  • details of  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)
  • confirmation that the company has not been restored to the register
  • certified copies of extracts from the trade marks register providing details of the trade mark
  • 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 other interested party.

The Crown will expect to recover its costs and may want payment in advance.

Obtaining ownership of a trade mark that vests with the Crown can be complex and time consuming.  This can easily be avoided by proactively assigning all trade marks (and other intellectual property) before a company is to be struck off the official companies register.

An edited version of this article was published in Her Magazine, August 2008

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