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Trade mark ownership: the Insight scoop to avoid refusal


Trade mark ownership: the Insight scoop to avoid refusal

June 9, 2017 10:55 AM | Posted by Nadia Braad and Lana Ristic | Print this page

The recent Full Federal Court decision of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd highlights the danger of filing a trade mark application in the wrong name.

There were a couple of corporate names used throughout the application – for the purposes of this post we will refer to the party seeking registration as Pham Global and the opponent as ICI.

Pham Global appealed to the Full Court following the decision of Justice Davies to uphold the Registrar's refusal to register the following mark:

The trade mark application was originally made by Mr Pham (the sole director of Pham Global) in his own name and later assigned to Pham Global.

At first instance, Justice Davies upheld ICI's opposition under section 60 and section 42(b) of the Trade Marks Act 1995 (the Act) but rejected ICI's ground of opposition concerning ownership under section 58.  

Pham Global appealed the decision concerning the section 60 and section 42(b) grounds, and ICI filed a notice of contention concerning the decision as to the questions of ownership under section 58.

Justice Davies found at first instance that, although Mr Pham was not the owner of the trade mark for the purposes of section 27(1) at the time of filing, the trade mark application was validly assigned to the owner, Pham Global, and accordingly, the requirements of ownership were satisfied during the course of the application. As a result, at first instance, the ground of opposition under section 58 was held not to be have been made out.

The Full Court reversed on this point, reiterating that the requirements for ownership of a trade mark must be satisfied at the time of application and any invalidating elements cannot be subsequently remedied.

Referring to the familiar formulation of ownership of an unused mark as the combination of authorship, the filing of the application, and an intention to use, the Full Court found that Mr Pham did not own the mark at the time of application.  Although Mr Pham was the trade mark applicant, he was not the author nor he did not intend to use (or authorise another to use) the mark. The Full Court held that the assignment of the mark by Mr Pham to Pham Global did not remedy the incorrect claim to ownership by Mr Pham. 

The grounds of opposition at sections 58 and 59 reflect the requirements of section 27 that only a person claiming to be an owner may apply for registration. There was a significant focus by Pham Global on section 106(1) of the Act which allows a trade mark, whose registration is being sought, to be assigned. The Full Court considered the trade marks regime as a whole and found that assignment of a trade mark pre-supposes the assignor's ownership of the mark that is to be transferred. Therefore an assignment under section 106 cannot rectify an application for registration made by someone who is not the owner.

This decision highlights the care and diligence required when making a trade mark application, particularly where corporate groups are concerned.