Correctly assigning the ownership of a trade mark is fundamentally important. A trade mark that is registered to the wrong owner can result in the entire trade mark being invalidated. In short: in Australia, the registered owner must be the user of the trade mark.
Trade Mark Ownership Case: Pharm Global
In Australia, the case Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 is the leading judicial authority on the ownership of trade marks, setting the precedent that incorrectly assigned ownership cannot be corrected after the fact by amendment: it must be assigned correctly at the time of application. In practice it is slightly more complicated than that – after all, this is the law we are talking about. But if you are a business owner seeking to register a trade mark and you take nothing else away from this article, I hope you can take away the fact that ownership is crucial and must be assigned correctly.
The Case
The details of the Pham Global case are illustrative. Mr Pham owned the company Pham Global. A trade mark was filed that listed Mr Pham as the owner. However, the trade mark was authorised, paid for, and used by Pham Global (the company) not Mr Pham, the individual. Therefore, the Justices of the case ruled that Mr Pham was not the true owner of the mark at the time of application: he did not use the mark himself or intend to assign it to the company, which are among the legislative requirements for ownership under s27(1) of the Trade Marks Act. Mr Pham did assign the mark to Pham Global, but only 18 months after registration of the mark.
The Decision
The Justices ruled that because Mr Pham was not the true owner at the time of registration, he could not subsequently assign property he did not legally own.
The reason why the Justices arrived at this conclusion is fairly straightforward. There are two main paths to ownership of a trade mark in Australia: through use and through registration. It is possible to use a trade mark for years without registering it and still be the legal owner of the mark. If a third party were to attempt to register the mark you have been using, you would have legal grounds to oppose that registration: only the true owner of a mark can be its registered owner. It follows then that ownership of a trade mark is defined (at least in part) as the user of said mark. Therefore, the user must be the registered owner, and if they are not, then the registration is invalid. It is not enough for you to be the owner of both the company and the trade mark. The user of the mark must be the registered owner at the time of registration.
Trade Mark Ownership in Australia
This is not to say you cannot have an alternative ownership structure for your company’s trade mark – you may find that an IP holding company makes sense for your business, for example, but you must be certain to have a solid, well-documented framework of assignments and ownership.
So, who owns your trade mark? The true owner is the user of the mark (or someone legally allowed to assign the mark to the user). Crucially, this needs to be correctly established at the time of filing and cannot be rectified after the fact. If you suspect that your trade mark may not have been correctly assigned, consult with a trade mark attorney as soon as possible. You may need to file a new application with the correct information.
As always, there is more to say on this topic – it’s the law, after all. But forewarned is forearmed, as they say, and it is all too easy to make a mistake that you don’t know is a mistake. When in doubt, and to remove all doubt, if you are thinking of registering a trade mark, make sure you get professional advice from a registered Australian and New Zealand Trade Mark Attorney such as those at Michael Buck IP.
