We recognise that the value of a brand to a business is important. Global brands like McDonald’s, Red Bull and celebrities like Kim Kardashian, Cardi B and Paris Hilton invest significantly in their brands.
However, not everyone is a trade mark lawyer and not everyone has the same budget of McDonald’s and Red Bull to spend on protecting their brand.
Some brand owners file their own trade mark applications without obtaining quality advice. This can lead to issues when it comes to invalidity of the trade mark and cross-claims when it comes to enforcement of the trade mark. The object of this article is to give brand owners information on common errors we see as trade mark lawyers.
Registration – The importance of naming the right name
A common error we see in trade mark registration applications lodged with IP Australia is that the applicant of the mark is not the true owner of the trade mark. Australia is a first to use country. That means that the first person to use a brand or trade mark in Australia is generally the owner of that trade mark. When companies go through restructuring exercises they may realise that they do not have trade mark registrations and so will apply for the trade marks in the name of the holding company.
However, if the operating company is the first to use the trade mark and there has been no assignment from the operating company to the company who applies to register the trade mark. This can lead to issues later when defending that trade mark against a competitor.
The Australian Trade Marks Act requires that the applicant is the owner of the mark. Recent cases have established that after application, this fault cannot be rectified and the trade mark is invalid.
Thus, if a trader attempts to enforce a trade mark against another trader in a trade mark litigation matter, then the other trader may cross-claim for invalidity of the trade mark.
Call EAGLEGATE today if you believe your trade mark may be invalid.
Use and Non-Use – be quick off the mark to defend your mark
Similar issues can arise if your trade mark is not used under control of the owner.
Section 7 of the Trade Marks Act provides that the trade mark must be used by the owner of the trade mark. If the trade mark is not used under control of the owner then firstly the trade mark may be removed for non-use and secondly another trader may claim to be the owner and apply to register the trade mark.
Again, this trade mark defence can be raised as a cross-claim for trade mark infringement. If the trade mark is deemed to be invalid, then the relief provided by the Court may not include an injunction.
Barriers to Brand Defence
Additionally, section 124 of the Trade Marks Act provides that it is a defence to any action commenced for infringement of a trade mark where the infringing trade mark was continually used prior to the date of registration of the registered trade mark, or prior to the first use of the trade mark by the registered owner.
So where there are issues regarding the naming of the correct owner on the registered trade mark it may defeat an action for infringement of a registered trade mark.
To enforce your trade mark against an infringing competitor and defend against any Non-Use Application, it is imperative that your trade mark is registered to the correct entity and you control its use
If you require advice on whether you have registered the correct owner on your trade marks, talk to us today.