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Trademark Ownership - Navigating the Complexities

By James Wan

All right, folks, let’s huddle up and talk about trade marks for a bit. Picture them as this massive wall around your brand, guarding all the hard work and reputation you’ve been brewing up. They’re crucial. But that wall needs to stand solid. You see, you want to register them right, and by the ’right person’ the first time around. You trip on that, and you’re looking at a tumble.

You might ask, ”Who’s this ‘right person’?” In Australia, the law - the Trade Marks Act 1995 - says the applicant has to be the true owner of the trade mark. But how do you tell who the real McCoy is?

Identifying the True Owner

Here’s how - it’s the first guy who crafts and uses that trade mark in Oz for specific goods or services. If the trade mark’s not been used yet, it’s a bit of a mix - who wrote it, who applied to register it, and if the applicant plans to use it, let someone else use it, or wants to hand it off to a company yet to be born.

Let’s imagine you’re not the real owner or don’t have the intentions I just mentioned. There’s a storm brewing, then. Some other party could latch onto your weak spot - they could use that ownership defect to dodge your infringement allegations or try to register the trade mark themselves. Sounds messy, right?

A Cautionary Tale

Let me tell you a story about Mr Pham, who personally registered a trade mark he had yet to use. His company, Pham Global, started using it. Another company, Insight, claimed Mr Pham wasn’t the real owner. He never intended to use it himself or licence it to Pham Global. To shake off Insight’s claims, Mr Pham tried to assign the trade mark to Pham Global—a big mistake. The court said the assignment was invalid. Why? Mr Pham wasn’t the real owner, so he had no right to pass on.

Can’t Fix it Later

Here’s the kicker: if you screw up the ownership, you can’t fix it later. It’s not like a flat tyre you can patch up. The applicant must be the true owner when filing—there are no two ways about it.

The Risks of Getting It Wrong

If you bungle the ownership, you might feel the pinch later, or ever. But it’s like a dark cloud hanging over your brand protection. Your trade mark could be challenged at any time. So, you’ve got to ensure you get the ownership right before you apply.

Borrowing a Trade Mark

Do you want to use someone else’s trade mark? You have to use it under their control. They have to show they control how you use it. But the law around this isn’t as clear as we’d like. Say a parent company authors a trade mark, but the subsidiary uses it under the parent company’s financial control. The true owner would likely be the parent company.

More Than One Owner

And here’s an interesting bit: a trade mark can have more than one rightful owner. It can be passed around as long as the ownership was valid at the time of filing. Let’s say an IP holding company is supposed to own the trade mark. If a different company is using an unregistered trade mark, they should file it. They can then pass it on to the IP holding company. Or if the trade mark has yet to be used, the IP holding company can file it.

The Bottom Line

The bottom line? If you register a trade mark under the wrong name, you could be in hot water. You might see the problem once someone infringes your trade mark, opposes it, or starts removal proceedings. And then, any ownership flaws could make your trade mark invalid or unenforceable. So, you’ve got to be super careful about who files your trade marks. If there’s a mistake, you’ll want to refile ASAP. Better safe than sorry, right?

Final Thoughts

So, folks, it’s a bit like preparing a recipe. You need all the ingredients just right. If you misread the measurements and use a cup of salt instead of a teaspoon, no amount of sugar can save your dish. It’s the same with your trade mark. Get it wrong at the start, and there’s no sweet ending.

So, friends, as trade mark owners, make sure to double-check your trade marks and whether they’ve been validly filed. And if there are issues, don’t sit on them - refile as quickly as possible. Because in this game, it’s not just about staying afloat; it’s about sailing ahead. I hope you’ve found this chat helpful, and remember, a stitch in time saves nine!