A cautionary tale for trade mark holders in Australia- there’s a new trend in legal cases to bring a cross claim to declare the trade mark invalid based on it being filed in the wrong name.

The warning comes from Brisbane intellectual property and trade mark lawyer Nicole Murdoch who says the trend in Trade Mark Litigation matters is for the defendant to plead that it does not infringe the trade mark because the trade mark is invalid.

The defence is based on the need for the entity filing the trade mark application to claim to be the correct owner. If the trade mark application is filed in the incorrect name, it will be invalid and cannot be enforced, she says.

Ms Murdoch, Principal with Brisbane boutique Intellectual Property and Privacy law firm EAGLEGATE Lawyers, which handles matters of Patent law, Copyright law, Trade Marks, Domain names and general Cyber law says the process of obtaining trade mark registration is not as simple as choosing the goods and services of an application, or even choosing the trade mark.

“Businesses need to ensure the trade mark is filed in the correct name so that it can be enforced at a later date.

“It’s very easy to apply for a trade mark online by simply checking boxes for the goods or services of the application.

“However, if the trade mark is filed in the wrong name it may be invalid,” she says.

“In Australia we have some idiosyncrasies when it comes to Intellectual Property Law and Australia just isn’t like many other countries when it comes to trade mark law. Australia is a first-to-use country, not a first-to-file country,” she says.

For the legally minded, Section 27 of the Australian Trade Marks Act requires that only persons who claim to be the owner of the trademark can apply to register an Australian trade mark.

“That is also a ground for cancellation of a trademark,” she says.

Ms Murdoch says when it comes to Patent infringement cases, it is exceedingly common for the Respondent to file a cross-claim for invalidity of the Patent.

However, it has not been common for a Respondent to a trademark infringement proceeding to counter-claim for invalidity of the trademark or to argue that point before a case is filed – until now.

“We are seeing more and more cases of the trade mark being threatened prior to cases being filed and trade mark cross-clams for invalidity being raised as a defence to a trademark infringement claim,” she says.

“The trademark lessons to be learnt here are to take qualified legal advice from a registered attorney before filing the trade mark application.

“Another lesson that needs to be realised is that trademarks are a ‘use it or lose it’ regime. It may be that an international application which designates Australia is invalid given that some other countries are a first-to-file country,” Ms Murdoch says.