In Australia, the first Tuesday in November is synonymous with The Melbourne Cup. Run by the Victoria Racing Club, the Melbourne Cup has been held since 1861 and is witnessed by over 100,000 spectators at Flemington racecourse and millions of viewers around the world.

Not surprisingly, ‘the race that stops a nation’TM has a number of trade marks associated with it including the cup itself (in the form of a shape trade mark) as well as name of the overall carnival being the ‘Spring Racing Carnival’TM.

Changes to Intellectual Property Ownership of Racehorses

As you might expect, many of the racehorses racing in the Spring Racing Carnival have themselves become well known, and in the past some owners have sought to protect the intellectual property associated with the racehorse (typically in the form of trade marks).

For example, the owners of three time consecutive Melbourne Cup winner Makybe Diva have registered a trade mark in respect of 20 odd classes of goods/ services. Other Aussie thoroughbreds associated with registered trade marks include Weekend Hussler and Black Caviar (and even the pattern of the silks worn by jockey Luke Nolen – salmon colour with black dots (right)).

However, the days of racehorse owners filing for their own trade marks for racehorses are over. As of 1 October 2012, as a condition of registering a racehorse under AR18.1A(1) of the Australian Rules of Racing, RISA requires that owners agree not to apply to register any of the “the racehorse indicia” as a trade mark; and not to bring any claim of ownership of any intellectual property rights in the “the racehorse indicia”.

In return, under AR.18A.(2) the Registrar of Racehorses grants the owners a nonexclusive, royalty-free and non-transferable licence (which can be sub-licensed to any person) to use “the racehorse indicia” for any purpose related to dealing with the horse (including merchandising).

Effectively this stops owners from filing their own trade marks – rather, the trade marks may be filed (and owned) by the Registrar of Racehorses who may grant permission to license the trade mark to the racehorse owner.

This situation is not unusual in sport – for example in Australia, trade mark ownership in the sports of Australian Rules Football and Australian Rugby League are all controlled by the body that runs the sport.