Intellectual Property - Trademarks

24 May 2016

#Intellectual Property

Lyn Nicholson

Published by Lyn Nicholson

Intellectual Property - Trademarks

Do you have to be the “Owner” of a Trademark before you have the Right to Register It (Section 27) and Revocation of a Registered Trademark (Section 84A)

Section 27 of the trademarks Act 1995 states that:

“A person may apply for the registration of a trademark in respect of goods and/or services if:

(a) the person claims to be the owner of the trademark; and ……….”

Does that mean that you have to “own” the trademark the subject of the application you are lodging with the Registrar of trademarks? Yes, you should be the owner of the trademark before you apply to register it as a trademark. 

Because of the use of the words “claims to be the owner” in section 27, at the time of lodging the application, the Registrar is not obliged to make any enquiry as to ownership of the mark before accepting an application to register that trademark. If the trademark is capable of being accepted as a registered mark, the Examiner will accept it whether you are the legal owner of the underlying trademark of not.

However, it is advisable that you do “own” the word only mark or logo before applying to register the trademark to ensure your ownership of that mark would not be able to be challenged at some later state. If you become successful with the use of your trademark and you have a thriving business riding on the use of that trademark, you do not want to have any question marks over your continued use of that trademark.

It is important to note that the registration of the application for the trademark does not cure the lack of ownership in the actual trademark the subject of the application. 

For example, if you have had a graphic artist design your logo for you at the start of your business, you should obtain an assignment of the copyright in that logo to secure your ownership of that copyright. That could be done at the time of commissioning your graphic artist to draw the logo for you or subsequently.

This was made clear in cases relating to oppositions objecting to the registration of an application and in cases dealing with applications to revoke a trademark where there had been competing interests for the same trademark. In these latter cases, it was not just a question of who had priority and who was registered first in time but more the question of the validity of ownership of that trademark.

In the case of Mediaquest Communications LLC v. Registrar of Trademarks (2012) 96 IPR 453, the registration by a director in Australia of a trademark that had been used in the USA was challenged by Mediaquest which had purchased the corporate owner of the business and the trademark in the USA. The Court looked at the validity of the assignment lodged by the director and the acquisition of rights by Mediaquest.

It was held that the existence of an effective assignment or transmission was a necessary precondition to the making of a valid application under section 109 to register an assignment of ownership of trademarks. The requirements for an effective assignment is set out in section 106 of the Act and this must be complied with to effect the assignment at law. If there was a valid assignment of the trademark to the director at law and it had been lodged as regulated under the trademarks Act, it was an effective registration of ownership in the name of the director.

It is therefore important to ensure the building blocks of ownership of the underlying rights to trademarks are securely in place. This is the case whether you intend to register that trademark or take an assignment on the purchase of a business. 

If you are purchasing a business that includes, as most do these days, a suite of intellectual property, this intellectual property should be separately identified clearly in the contract of sale. This will ensure that there can be no dispute about what property was purchased and what was not part of the transaction. 

While those ownership rights will not be challenged by the Registrar of trademarks on lodging your initial application or lodging your notice of assignment of the trademark, your ownership can be challenged on any opposition lodged by an interested party or later once the trademark is registered, on an application for revocation of a registered trademark. 

Take the time and spend a little extra to ensure you own all of your intellectual property.

Contact Details

Dan Pearce, Partner
T: +61 3 9321 9840
E: dan.pearce@holdingredlich.com

Lyn Nicholson, General Counsel
T: +61 2 8083 0463
E: lyn.nicholson@holdingredlich.com


The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this newsletter is accurate at the date it is received or that it will continue to be accurate in the future.

Lyn Nicholson

Published by Lyn Nicholson

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