A key aspect of trade mark ownership is identifying the correct owner of the trade mark. If the person or entity named as the trade mark owner is not the actual owner of the trade mark, the trade mark may be removed from the Trade Mark register.
Are you eligible to be a trade mark owner?
The first step you should consider before filing a trade mark application is whether you are eligible to own a trade mark in Australia.
A trade mark owner can be an individual, a company, an incorporated or unincorporated association, a body existing under legislation (for example a registered charity).
When applying for a trade mark registration in Australia, you must have an address for service in either Australia or New Zealand, or alternatively, you can use a local agent’s address (including your solicitor’s address).
Are you the proper owner?
Assuming that eligibility is satisfied, you must then consider the question “who owns the trade mark?”.
Section 27(1) of the Trade Marks Act states:
“A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Therefore, you must jump over 2 hurdles to become the registered owner of a mark. You must satisfy the test in section 27(1)(a) and you must satisfy one of the 3 requirements of section 27(1)(b).
Section 27(1)(a) – True Owner
As set out above, you may apply for the registration of a trade mark if you claim to be the owner of the trade mark. As it is a claim made by you as the applicant, the Registrar is not obliged to make any enquiry as to ownership of the mark before accepting an application to register that trademark.
It is important that you are sure you are the proper owner and applicant of a trade mark prior to filing an application because, if it comes to light later that you are not the proper owner, the registration may be challenged. If the challenge is successful, all of the time and cost expended by you in promoting that mark would have been in vain.
Can you cure a trade mark ownership defect by assigning the trade mark?
According to the Federal Court decision in the Pham Global v Insight Clinical Imaging Pty Ltd case in 2017, any assignment from an applicant (who is not the true owner of the mark), in favour of the true owner, is not an effective procedural step to cure a defect of ownership in the original application. The decision follows the reasoning that you cannot assign ownership of something which you do not own.
Section 27(1)(b) requirements
In addition to being the owner of the mark, you must also satisfy one of the 3 requirements under s27(1)(b) of the Trade Marks Act – you must also intend to use the mark, or have authorised (or intends to authorise) another person to use the mark, or intend to assign the trade mark to a body corporate that is about to be constituted.
Section 27(1)(b)(i) – Using the trade mark
It is usual for a trade mark to be used before you file a trade mark application to register the trade mark. If that is the case, and you continue to use the trade mark, then the issue of non-use will not arise. However, if you file an application before a trade mark has ever being used, and the trade mark is not used by within the stipulated time period, third parties can file an application to remove your trade mark from the trade mark register for non use.
For trade marks registered prior to 24 February 2019, section 93(2) of the Trade Marks Act states that an application to remove a mark for non-use under section 92(4)(b) can only be filed after a period of five years from the filing date, and if the trade mark has not been in use for all of the goods or services covered by the registration for a continuous period of three years prior to the filing of the non-use application.
This stipulated time period recently changed, and in respect of trade mark applications filed from 24 February 2019 onwards, a trade mark will become vulnerable to removal or partial removal (limitation) for non-use after three years from the date of registration (rather than the filing date).
s27(1)(b)(ii) – Authorising a third party to use a trade mark
A licence is commonly used to commercialise IP, including trade marks. It is a common way of authorising a third party to use your trade mark, while still maintaining ownership of the trade mark.
You can include in a licence, terms relating to exclusivity, and restrictions as to the product, field or geographical location for which the licence applies. You can also include a payment term where, in exchange for a licence to use your mark, you receive a licence fee or royalty.
s27(1)(b)(iii) – Assignment
s27(1)(b)(iii) of the Trade Marks Act allows you to apply for a trade mark before your corporate entity (which is expected to use the trade mark) has been formed. In that situation, a trade mark application can be filed, then assigned to the new corporate entity once it has been constituted.
Takeaways
- In order to properly secure a trade mark:
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- You must be eligible to hold a trade mark in Australia.
- You must be the trade mark owner.
- You must use the trade mark, authorise a third party to use the mark, or assign it a corporate entity to be formed, once it has been formed.
- An assignment from a person who is not the owner of the trade mark, in favour of a true owner, is no longer effective procedural to cure a defect of ownership in the original application.
About the author
Juliana holds a Master of Laws from the University of New South Wales, specialising in Innovation Law (IP) and Media and Technology Law.
Juliana is experienced in intellectual property matters including domain name disputes, trade mark registration applications, trade mark infringement related issues and misleading or deceptive conduct and passing off claims.
How can we help
If you are interested in filing a trade mark application or licencing your trade mark, or have any intellectual property related enquiry, and require assistance or advice tailored to your particular circumstances, please contact Juliana Ng by email on jng@mtpartners.com.au
Disclaimer: This article is intended to provide general information only, and is not to be regarded as legal advice. Formal legal advice should be sought in relation to particular transactions or circumstances.
