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
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.
This publication does not deal with every important topic or
change in law and is not intended to be relied upon as a substitute
for legal or other advice that may be relevant to the reader's
specific circumstances. If you have found this publication of
interest and would like to know more or wish to obtain legal advice
relevant to your circumstances please contact one of the named
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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