30 August 2017

Trade mark spotlight

The Trade Marks Act 1995 permits a person to apply for registration of a trade mark in respect of goods and/or services if they claim to be the owner of the mark and they either:

  1. use, or intend to use the mark;
  2. authorise or intend to authorise another to use; or
  3. assign or intend to assign the mark to a body corporate constituted with the view of using the mark,

in relation to the goods/services.

The Full Federal Court has confirmed in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 that the basis of trade mark registration is proprietorship, that is, registration is premised on the applicant having created the trade mark and either be using or intending to use or otherwise deal with the mark in accordance with the Act.  The court held that if an applicant is not the ‘owner’ of the trade mark at the time the application is filed, then registration will be invalid and unenforceable.

In that case the sole director had filed an application for registration of a trade mark in his personal name, instead of the name of his company.  The Full Federal Court concluded that the trade mark registration was defective because it needed to be filed in the company’s name as the mark had been designed for and used by the company in connection with its business, that is, the company was the owner not the director.  Having found that the registration was defective, the court clarified that there was no mechanism for the registration to be remedied by amendment or assignment.

This decision is significant as it clarifies that the assignment of a trade mark is premised on the assumption that the person purporting to assign the trade mark actually owns it.  If a registration is defective because it was not filed in the correct applicants name, then any subsequent assignment will also be defective and invalid.  If you would like more information on trade marks, please contact our commercial law team on 07 4036 9700.

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