Assigning goodwill

Norton Rose Fulbright’s Abida Chaudri and AliceRouth discuss cases that examine who owns the goodwill when assigningtrademarks

Abida Chaudri and Alice Routh - Norton Rose Fulbright

Goodwill has long been understood as “the attractive forcethat brings in custom” and assignments of trademarks invariably include thegoodwill attached to the business in which they are used. However, in arecent invalidity action involving the well-known Australian chef ScottHallsworth, it was argued that assignments of the KUROBUTA trademark were“assignments in gross” which did not transfer the goodwill residing in thechain of Kurobuta restaurants.