Your brand name is a significant business asset that distinguishes your goods and/or services from those of another trader and serves as a badge of origin and/or a guarantee of quality. Therefore, seeking protection of your brand name should be an important part of your overall IP strategy.
And while applying for the registration of a trade mark at the Australian Trade Marks Office seems a simple enough process, incorrectly identifying the owner of the trade mark can be fatal, as the trade marks office registers ownership, rather than providing ownership by registration.
Authorship and Ownership
In Australia, section 27(1) of the Trade Marks Act 1995 requires that the applicant for the registration of a trade mark in respect of goods and/or services:
- Claims to be the owner of the trade mark; and
- Is either using, or intending to use, the trade mark in relation to the goods and/or services, or has authorised another to use, or is intending to authorise another to use, the trade mark in relation to the goods and/or services.
Therefore, the applicant must either be the author and first user of the trade mark as a trade mark (badge of origin) in relation to the goods and/or services, or alternatively, the author of the trade mark who has filed an application for the registration of the trade mark with the intention of using, or authorising another to use the trade mark.
If the applicant was not the first user of the trade mark, or was not intending to use the trade mark when the application was filed, they may not be the correct owner.
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd  FCAFC 83 (“Pham”),
In Pham, the full Court of the Federal Court of Australia unanimously held that incorrect ownership of a trade mark could not be corrected by assignment after an application had been filed.
Mr Pham was the sole director of AKP Radiology Consultants Pty Ltd. In 2011, Mr Pham applied to register a trade mark for INSIGHT RADIOLOGY (composite mark) in his own name. In 2012, the company was rebranded to Insight Radiology and new clinics opened in that name. Subsequently, in 2013, the name of the company was changed from AKP Radiology Consultants Pty Ltd to Insight Radiology Pty Ltd and Mr Pham assigned the accepted trade mark application to Insight Radiology Pty Ltd.
Although Mr Pham claimed that he, as the owner of the trade mark, intended to authorise his company to use the trade mark, the Court found that on the basis of the evidence provided, that this was not the case.
While the Court found Mr Pham may have been able to satisfy the “authorship” requirements of section 27(1) of the Trade Marks Act 1995, he was not the owner of the trade mark because at the time of filing the application he, personally, was not using the trade mark, and he had not authorised the use of the trade mark nor had he intended to authorise the company to use the trade mark.
Further, the Court held that the Trade Marks Act 1995 provided for the “registration of ownership not ownership by registration”. That is, only a person or business claiming to be the owner of a trade mark may apply for the registration of the trade mark and therefore ownership of the trade mark was not able to be corrected by assignment as an applicant for the registration of trade mark cannot transfer ownership of a trade mark that they do not own.
As a result, the trade mark application for INSIGHT RADIOLOGY was found to be invalid and refused.
In summary, it is important that the correct owner of the trade is identified at the time an application to register a trade mark in Australia is filed.
When filing a trade mark application, you should consider not only who is the author of the trade mark, but also who is using, or intending to use, the trade mark, and who has the capacity to authorise the use of the trade mark.
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The team at Kings are experts in patent and trade marks law. Contact us today so we can help you with any trade mark application you may have.