Trade mark ownership: do you really own your trade mark?


Posted By on 16/07/18 at 4:01 PM

The case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 has raised significant interest regarding trade mark ownership and the circumstances in which ownership may be challenged.  In Pham, the Full Court of the Federal Court held that the requirement for trade mark ownership must be satisfied at the time the application is made and any defect in trade mark ownership cannot be rectified after the application is filed.

The facts

Mr Pham filed an application for registration of the Pham Mark on 7 December 2011 for radiological services. The mark had been used since March 2012 by Mr Pham’s company, Pham Global Pty Ltd (Pham Global). Insight Clinical Imaging Pty Ltd (ICI) filed an application for registration of the ICI Mark on 10 October 2012 also for radiological services and had been using the mark since 2008.

ICI opposed the registration of the Pham Mark and issued proceedings against him and Pham Global for infringement, misleading or deceptive conduct and passing off. Following a number of claims, cross-claims and appeals the Full Court ultimately ruled that Mr Pham’s latest appeal was to be dismissed, resulting in the Pham Mark being refused by IP Australia.

trade mark ownership

Ruling on ownership

As part of its judgment, the Court considered section 27(1) of the Trade Marks Act, which allows a person to apply for registration of a trade mark “if the person claims to be the owner of the trade mark” and if one of the following apply:

  • the person is using or intends to use the trade mark; or
  • the person has authorised or intends to authorise another person to use the trade mark; or
  • 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.

ICI opposed the Pham Mark on the ground that Mr Pham was not the owner of the trade mark at the time of making the trade mark application. The Full Court agreed. The Court found that Mr Pham did not own the mark at the time of his application as he was not the author of the mark (Pham Global was the author and paid for the development of the logo). Given this, Pham Global was the original owner of the mark and Mr Pham did not intend to use or actually use the mark in his individual capacity. The only use was made by Pham Global. The use by Pham Global was not use authorised by Mr Pham as Mr Pham was not the owner of the mark and therefore was not in a position to be able to give that authorisation.

In rejecting obiter dicta and reasoning of three previous decisions, the Court held that trade mark ownership must be satisfied when the application is made and cannot be satisfied any time thereafter.

Mr Pham had assigned the application to Pham Global 18 months after the filing date. However, the Court found this was immaterial as Mr Pham could not assign something which he did not own and nothing could cure the deficiency in trade mark ownership that existed at the application date.

Take home message

This is a crucial outcome for all trade mark users to consider when filing a trade mark application. It is vitally important applicants ensure that any trade mark application they file, or have an agent file, is in the name of the entity that owns the trade mark.  This will be the case if that entity is using or intends to use the mark, or if the entity has authorised or intends to authorise another entity to use the mark, or if the entity intends to assign the mark to a body corporate that is about to be constituted for use of the mark.

Any trade mark applications or registrations that have been filed in the name of an entity that was not the owner at the time the application was filed are at risk of being successfully opposed or revoked.  In this case, the best option is to file a new application in the name of the correct entity to protect the trade mark position in Australia.

If you have any questions about the ownership of your trade marks, or to discuss trade mark issues in general, please do not hesitate to contact us.

Associate

Jessica joined KHQ in 2016 and specialises in providing advice and assistance with commercial law matters, with a particular focus on intellectual property and franchising.

Prior to joining KHQ,... Read More