In the flurry of activity to launch a new business or brand, it’s easy to file a trade mark application and overlook the critical matter of whether the correct applicant has been identified.
The Federal Court decision Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd  FCA 1406 dealt with an appeal by Insight Radiology Pty Ltd (IR) to the successful opposition of its application for the trade mark depicted as Figure 1 by Insight Clinical Imaging Pty Ltd (ICI).
Please click here to view Figure 1.
ICI successfully opposed the Circle Mark application on the basis of s 58 of the Trade Marks Act (1995) before the Registrar. On appeal, ICI focussed its argument on the fact that IR’s director, Mr Pham, had filed the application in his own name and subsequently assigned it to IR. An issue was whether Mr Pham was entitled to claim ownership of the mark and whether he, as the applicant, had the requisite intention to use, license or assign the mark. Under s 27(1), a person may apply for registration of a trade mark if the person:
(a) claims to be the owner of the mark
(b) is using or intends to use the mark
(c) has authorised or intends to authorise another person to use the mark, or
(d) intends to assign the mark to a body corporate about to be constituted with a view to the use by the body corporate of the mark.
Ownership of a mark is demonstrated by first user of the mark in Australia or, if the mark is yet to be used, the combined effect of ‘authorship’ (an intention to use the mark as a trade mark), and the act of applying for registration.
ICI argued that IR, and not Mr Pham, was the ‘author’ of the mark and that it was never Mr Pham’s intention to use the mark, whether by licence or otherwise, within the terms of s 27(1). Consequently, ICI claimed Mr Pham was not the owner of the mark, and that Mr Pham also lacked intention to use. Mr Pham’s evidence was that he applied for registration of the Circle Mark in his name on the basis he intended to license it for use by IR and another company he owned and controlled. However, he then decided that it should be owned by IR and then licensed to his other company. In the alternative, IR submitted that if the application should have been made in the name of IR as the ‘true owner’ at the application date, IR became the applicant during prosecution of the application via an assignment and met the ownership requirements under s 27(1).
It was held that IR, not Mr Pham, was the party responsible for the authorship of the mark, having paid for and been involved in its design. The Court did not consider Mr Pham’s explanation as to why the application was filed in his name to be credible. Accordingly, he was not the owner of the mark and did not have an intention to use, assign or license the mark.
Nevertheless, the Court found that IR satisfied the requirements for ownership under s 27(1). IR was therefore the owner of the mark for the purposes of s 58, and had the requisite intention to use such that these grounds of opposition failed. ICI was, however, successful on another ground.
This case serves as a reminder of the importance of selecting the correct applicant for your trade mark application.