The question of ownership is an important one that should be considered before promoting a trade mark or applying for registration of a trade mark. In Australia, the Courts have held that there are two general mechanisms by which ownership is acquired. These are through use and/or through authorship.
Ownership Through First Use
The first person to use a trade mark in trade in Australia is its owner. Consequently, it is not possible to validly obtain registration of a trade mark that has previously been used by another company in the course of trade in Australia, regardless of whether that company has applied to register the mark. It should be noted that the prior use does not have to be by an Australian company.
A foreign company sending business correspondence or invoices bearing its trade mark into Australia will be deemed to be the owner of the trade mark if it is the first entity to use the mark in this country.
Ownership Through Authorship
Secondly, the author of a word or logo comprising the trade mark will be the owner provided that he/she (or his/her successor in title) intends to use the trade mark and has applied for registration. Where an outside contractor such as a graphic artist or marketing agency is the author of a trade mark, an agreement should be in place assigning creative rights, e.g. copyright, to the applicant.
Australia does not follow the first-to-file rule. Even if you have not yet registered a trade mark, you might have some common law claim over it if you can show your business has been using it in the past.
Pham v Insight
Trade mark ownership must be properly considered in consultation with an Attorney prior to filing a trade mark application. This is evidenced by a 2017 Court decision about a trade mark applied for in the name of Mr Pham, the owner of Insight Radiology (the Company).
A third party opposed registration of Mr Pham’s trade mark, on the basis that Mr Pham was not the owner of the trade mark and never intended to use the mark for radiological services – rather it was the Company who owned and used the trade mark. That argument was dismissed by the Judge at first instance, who concluded that because Mr Pham had assigned the trade mark to the Company, the requirement that an applicant own the mark at any time during the application was satisfied.
However, the finding of the Judge at first instance was overturned by the Full Court, which asserted on appeal that ownership by the applicant must be satisfied at the time the application was made.
This significant case means that there is no post-filing remedy if a trade mark Applicant is not the true owner of the trade mark at the time an
application is filed.
If you believe your Australian trade mark application may have been filed in the name of the incorrect owner we encourage you to speak with an attorney to file a new application. Contact Geraldine Rimmer geraldine@mbip.com.au for assistance with your trade mark application.