Who Can File a Trademark Application in Australia?

In Australia, section 27 of the Trade Marks Act 1995 prescribes that:

(1)  A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)  the person claims to be the owner of the trade mark; and

(b)  one of the following applies:

(i)  the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)  the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)  the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

A ‘person’ in this sense is a legal person, which could be an individual, a company or the partners of a partnership. A trust cannot own a trade mark Ownership lies with the trustees of the trust. The trust itself doesn’t have legal personality. A ‘business name’ cannot own a trademark, as it is not has no legal personality – rather a business name is kind of like an ‘alias’ for whoever is running the business (be that an individual, company or partnership for example) such that usually it would be that business name holder that is the ‘person’ who can own the trademark. This often happens, that somebody will file a trademark application in the name of the business name, with an ABN.

It is possible for trade marks to have joint owners, which may occur for example in a partnership in which you might name all partners, or by agreement one partner acting for the partnership. In the case of joint owns being listed, they can’t deal with their rights separately, they have to deal with them as one. It is important to ensure, if operating under a partnership, the manner in which the partners agree to deal with the trademark properties (including in the event of the partnership dissolving) is discussed and agreed in the partnership agreement.

Who is the legal trade mark owner?

The above definition per section 27 of the Act is important. At a fundamental level, trademark ownership really depends on either use of the trademark, as a first user, or in the absence of that filing of a trademark application with a genuine intention to use it in commerce in respect of relevant goods or services.

The person that registers the trademark, for all intents and purposes (subject to someone proving that you don’t own it) is the person owns the trade mark for the goods and services claimed.  When you file a trademark application you’re essentially taken, at face value, to be the person that has used, or has intended to use it, if you weren’t already using it.

In Australia at least, it is crucial to determine the correct legal person who has ownership of the trademark at the time an application filed. Filing in the wrong legal person’s name cannot be remedied later by transferring the trademark to the correct legal person. Be mindful that a trademark is property, so the person that truly owns that property is the one with the right to apply. If that is not correct from the outset, it stands to reason that the applicant cannot transfer it to someone else (even if the transfer is to the true owner) as it was never the applicant’s property to be dealing with in the first place.

Can different people own the same trademark?

In short yes. This can depend on the country or territory and also be determined by the particular good and/or services described in the trade mark application. You can have the same trademark owned by different, unrelated people in different countries, and you can have the same trademark owned by different and unrelated people even in the same country, but for entirely different goods and/or services.

As an example, a person could register a trade mark for something like “MILO” in relation to milk flavouring products, and if someone else wanted to use and register MILO as a trade mark for say engineering services (purely as an example) there’s no reason they couldn’t do so as the goods and services are so different it’s not likely to create confusion.

If I sell my business what happens to the trademark/s?

This will likely depend on the business sale agreement. Sometimes the business sale agreement will have like a catch-all term like, “all assets of the business are transferred,” in which case, basically, you’ve assigned the intellectual property (which includes registered and even unregistered trademarks). It’s preferable to be specific about what’s being assigned.

The assignment or transfer of ownership also needs to be recorded, if it’s a registered trademark. It should be recorded with the relevant trademark offices so that ownership is clear from looking at the registers. Different countries have different requirements as to the documents required to record an assignment of trademark ownership. If the assignment is not recorded with the relevant it can cause all sorts of problems. This can lead to a situation where a trademark is no longer actually owned by the person that’s named on the register, because it was assigned with the business transfer. If the assignment wasn’t recorded, if somebody else (a third party) later on challenges that trademark and says that the owner on the register hasn’t used it, that could be fatal and result in loss of the trademark.

How long can I own my registered trademark for?

In Australia, you could potentially own your trademark forever. The initial registration will last 10 years (starting from the date of filing the application) and you can renew each 10 years. Subject to challenges from third parties, you can continue renewing each 10 years indefinitely. Trademarks can be removed from the register if they are not used for all or some of their claimed goods/services after a period of time. Such removal occurs at the application of a third party who seeks to removal your trademark either in full or in part due to no use of the mark for the relevant goods/services in the relevant time-frame.

Common misconceptions about trade mark ownership:

We see a lot in terms of trademark ownership and misconceptions about it, but one thing that’s really important to know is that owning a trademark registration doesn’t necessarily give you the right to stop other people from using it. This is a common misconception. We often hear people say that, “I own trademark X, and somebody else is using trademark X or something very similar, therefore I can stop them.” Not necessarily, it depends on a lot of circumstances. Owning and registering a trade mark is not a blanket right to that brand in all circumstances.

Sometimes you can stop another person from using the trademark (or similar trademarks) you’ve registered, but it has to be within certain confines. Firstly, as trademark registration and ownership is country by country, if you own a registered mark in Australia, another person’s use of the same or similar in another country does not infringement your Australian rights. Secondly, you need to be sure they cannot avail themselves of a defence. In Australia, one defence for example is that person has been using that mark for longer than you’ve actually registered it or used it yourself. That would make them a prior continuous user, and therefore there would not be infringement.

It’s also important to keep in mind that your registration, if you have a trademark registration, is for the goods and/or services that it covers. Your rights as owner (which include the rights to use your trademark and take action for infringement are very much relevant to those goods/services and related activities).

Before asserting rights in a trademark that you own against another person it’s important to seek advice to ensure that you are indeed within your rights to make any allegation against a person for trademark infringement. Making a claim against another person, demanding they stop use and threatening legal action can backfire if it transpires you did not have the right to make that threat.

We recently had a dispute that was very bitter, where another party had a registration for clothing, and he thought that that gave him the right to demand our client stop using a similar trademark, not the same one, for a different kind of product. And he didn’t have that right. The products weren’t similar, and they certainly weren’t the same. In this case, for the relevant product, our client was also the earlier user. The other party continued to make threats of infringement actions and we had to basically point out to him that those threats were unjustified.

If you are unsure about your trademark ownership, or another party’s use of a similar brand to yours, please contact us to see how we can assist.

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