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Filing Trade Marks in Australia – Clarifications from Recent Cases

Filing Trade Marks in Australia – Clarifications from Recent Cases

It can be relatively easy to file in Australia but there have been some recent changes that limit how we can correct errors if incorrect information has been provided.

Background

In order to file a trade mark, we require the following details:

It should be noted that we do not require signed forms or power of attorney forms in Australia.

Priority Claims

An applicant can claim priority within six months of an initial foreign filing under the Paris Convention.  We can also claim partial priority from a foreign filing if only some of the goods or services are intended to be covered by the mark in Australia.

Goods & Services

We do not need to limit the scope of the Australian filing to goods or services that are already actually in use in Australia.  Instead we can file for goods and services for which the applicant has been using the mark AND to goods and services that the applicant intends to use the mark for in the near future (within next 3 to 5 years). It should be noted that whilst we cannot cover all goods or services in a class, we can include intended use.  It is good practice to include specific definitions of goods and services to support broad category terms.

Applicant

It is important that we identify the correct applicant.  An application must be filed in the name of the legal person who is owner of the trade mark at the filing date.  An error made at this stage cannot be remedied by assigning ownership at a later date – the application is considered to be fundamentally flawed.

In a recent case of Pham Global Pty Ltd v Insight Imaging Pty Ltd the Federal Court of Australia confirmed the requirement that the correct applicant must be identified at the time of application.  In this case an individual filed for registration of the mark.  However due to the individual not being the author or himself intending to use the mark he had no valid right to nominate as the applicant.  Instead it was his company that owned the mark and intended to use the mark.   In this case there was specific review of the assignment from the individual to his company.  It was decided by the Full Federal Court that the assignment could not correct the situation as it requires the Assignor to own the mark.

In general, ownership of a trade mark in Australia can be determined through a combination of:

  1. first to create or author the mark;
  2. first to use the mark in Australia; and
  3. first to register the mark in Australia or earlier overseas with 6-month priority under the Paris Convention.

Copyright Considerations

It is also important that there has been an assignment of figurative elements of the mark from the original designer to the trade mark owner.  In a recent case of Havmor Ice Cream Ltd v Honest the Snack Shack Pty Ltd [2016] ATMO 64 (18 August 2016) it was the ownership of the copyright of the logo originally in India by the opposing party which was used to secure a claim to the trade mark by the opponent over the applicant’s first use and first to file claims in Australia.