Do you know who owns your trade mark?

Before filing a trade mark in Australia or New Zealand, make sure you’ve got the owner right.

If you are a brand owner filing trade marks in Australia or New Zealand (or advising clients who are), deciding whose name goes on the application is not just a minor administrative detail.

Naming the wrong applicant could make the entire registration invalid, leading to big problems when it comes time to enforce or defend those brand rights.  A business could discover, potentially years later, that the trade mark rights it thought it owned cannot be relied on to stop competitors using similar marks.

That risk is particularly easy to overlook for international corporate groups.  The usual corporate instinct (“we hold all our IP in the parent, so let’s file there”) may not be appropriate in an Australian or New Zealand context.  A US parent company might ordinarily hold the group’s IP, but an Australian subsidiary may be the entity entitled to ownership because it created and first used the mark locally.

Two decisions – one Australian and one New Zealand – show why this matters:

• The Full Federal Court of Australia decision of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; and
• The New Zealand Trade Marks Hearings Office decision of Corporate IP Holdings Pty Ltd v Gardner NZ Intellectual Property Ltd [2022] NZIPOTM 24.

Together both cases make one point clear: corporate control is not the same as trade mark ownership, and filing in the wrong name might not be fixable later.

Why choosing the right applicant matters

In both Australia and New Zealand, only the owner of a trade mark can apply to register it, and ownership is assessed at the date of filing.

Broadly speaking, ownership comes from one of two sources:

• prior use of the mark; or
• where the mark hasn’t been used yet, authorship of the mark combined with filing the application and an intention to use it (or to authorize its use).

The Australian courts describe the system as providing for “registration of ownership not ownership by registration” – in other words, an applicant must objectively be the owner at the time they file the application.

On the face of it, it all sounds pretty straightforward, but the trap usually arises in corporate group settings, for example where:

1. a founder files in their personal name;
2. a parent files for its subsidiary’s brand; or
3. an IP holding company files for a mark that another group company created and was already using.

The Australian position – Pham Global

• Mr Pham, sole director of a radiology company, files an application for an INSIGHT RADIOLOGY logo mark in his own personal name.

• Mr Pham’s company (not Mr Pham personally) starts using the mark for its radiology services.

• Mr Pham assigns the trade mark to the company, apparently to cure the ownership problem.

The founder was not the owner

The Court found that Mr Pham did not own the mark when he filed the application.  He was not the author of the mark, because the company was.  He also didn’t intend to use the mark himself or to authorise the company to use it – it was always intended that the company would use the mark as its own.  Being the sole director and controlling mind of the company did not make him personally the owner of the trade mark.

A later assignment couldn’t fix it

The trial judge had held that ownership could be satisfied at any time while the application was pending, so the 2013 assignment initially saved the application. The Full Federal Court disagreed. It held that ownership must exist when the application is filed and that earlier authorities suggesting otherwise were “plainly wrong”.

The Court gave two reasons why the assignment didn’t help:

• Nothing that happened after the filing date could cure the lack of ownership on that date.
• In any event, Mr Pham couldn’t assign what he didn’t own.

What about New Zealand?

Pham Global was followed by the New Zealand Trade Marks Hearings Office in Corporate IP Holdings v Gardner NZ.

• GARDNER trade mark starts being used on paints in New Zealand by Eterna Kote Ltd, who was importing the paints as a distributor of Master Haus Group Ltd.

• Master Haus Group Ltd files an application to register GARDNER for paints in New Zealand.

• The GARDNER application is assigned to Eterna Kote (which later changes its name to Gardner NZ).

The Assistant Commissioner upheld the opposition under section 32 of the New Zealand Trade Marks Act 2002 – that the applicant was not the owner at the time of filing.

The key findings were:

• The applicant itself had no intention to use. Normally, filing supports an inference that the applicant intends to use the mark. But Master Haus’s own evidence showed that it never intended to use GARDNER, Eterna Kote was always intended to be the user.
• A common director was not enough. Treating the two companies as interchangeable because they shared a sole director would “ignore the different legal personalities of the companies”. No agreement about use of the mark, and no other explanation of the relationship, had been provided.
• The assignment didn’t cure the defect. Following Pham Global, the later assignment could not resolve the “fundamental defect” that Master Haus couldn’t claim to own the mark when it applied.
• Distributors may face a further hurdle. Even if the application had been filed in Eterna Kote’s name, the Assistant Commissioner noted that a mere distributor is unlikely to have a valid claim to own the mark.
• Genuine errors may be corrected in some circumstances. Under section 38 of the New Zealand Act, a genuine error or omission can be corrected in an application before it’s registered (provided it’s not fixing a “mere change of mind”).

The practical lessons for businesses filing in Australasia

Don’t assume that an application filed in the name of a founder, director, parent or related company can be tidied up later.

Before filing in Australia or New Zealand, brand owners should ask themselves:

Why is this particular legal entity entitled to claim ownership of this mark today?

• Work out who is entitled to ownership at the filing date, based on who created the mark, any prior use, and who intends to use or authorise its use.
• File in the name of the right owner – don’t rely on an assignment after filing to fix an ownership problem.
• Where the owner and the user are different entities, document the relationship clearly – for example, with a written licence or other arrangement showing authorised use.
• Consider reviewing key existing registrations where ownership may be uncertain, particularly before enforcement or renewal strategy becomes important.

If you need help structuring trade mark filings in Australia or New Zealand, our specialist Intellectual Property team can assist. Contact us to discuss.

Thank you to Duncan Cotterill Intellectual Property Partner Katy Rostovitch for preparing this article.