Businesses need to be careful that the true owner of a proposed trade mark is the person in whose name the application for registration is lodged. In Australia, the registration of trade marks is governed by the Trade Marks Act 1995 (Cth) (the Act) and the question of ownership is critical to the registration and validity of a trade mark.

The Act prescribes that a person may apply for registration of a trade mark, if the person claims to be the owner and one of the following applies:

  • the person is using or intends to use the trade mark in relation to the goods or services;
  • the person has authorised or intends to authorise another person to use the trade mark in relation to the goods or services; or
  • the person intends to assign the trade mark to a body corporate that is about to be constituted with the intent that the body corporate will use the trade mark in relation to the goods or services.

Ownership is central to the question of registrability, as registration can be opposed on the basis the applicant is not the owner of the mark. Additionally, under the Act, a trade mark can be removed from the register for non-use if the owner of the mark has failed to use it in relation to the goods or services. Care should be taken to ensure an applicant meets the requirements listed above before a trade mark application is filed.

Where a proposed trade mark is already in use prior to lodging an application for registration, ownership will be based on first use. However, where a proposed trade mark is not already in use, ownership is assessed by reference to any of the following:

  • the applicant filing the application;
  • the applicant having an intention to use the trade mark (or to license it); and
  • the applicant being the ‘author’ of the trade mark (this does not entail designing the trade mark, but rather choosing to adopt the mark).

The issue of ownership was the subject of a federal court decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 (Pham Global). The parties to the dispute were in the business of providing radiology services. Insight Clinical opposed Pham Global’s application on the basis that Mr Pham was not the true owner of the trade mark.

Mr Pham was the sole director of Pham Global and filed a trade mark application in his own name. At trial Mr Pham gave evidence that he intended to license the trade mark to his company. After becoming aware that the trade mark application was to be opposed by Insight Clinical, he assigned the trade mark application to the company.

The Federal Court held that the requirement of ownership must be satisfied when the application for registration is made and cannot be made at a later time. Since Mr Pham was not the owner of the mark at the time he applied for registration, the purported assignment of the application could not cure the defect. 

An application or registration filed in the wrong name will be vulnerable to opposition or cancellation proceedings. Businesses should seek advice before trying to rectify any potential issues with a trade mark registration. If you require intellectual property law advice or information in relation to registering a trade mark, or any other issue regarding your trade mark rights, please do not hesitate to contact us.

This article was co-written by Lawyer, Madeline Tait.

This article is not legal advice.  It is intended to provide commentary and general information only.  Access to this article does not entitle you to rely on it as legal advice.  You should obtain formal legal advice specific to your own situation.  Please contact us if you require advice on matters covered by this article.

Richard Suters

Richard Suters -

Principal

Contracts and commercial law specialist