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ARTICLE · 18 JUNE 2017

Accept no substitutes – Assignment will not cure defective trade mark filing

Norton Rose Fulbright Australia
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Brand owners and their attorneys must make certain that applications are filed in the name of the mark's actual owner.

AustraliaIntellectual Property
Helen Macpherson
Helen Macpherson
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The Full Court of the Federal Court has issued a significant decision in relation to trade mark ownership, which reconfirms the position in relation to the assignment of trade mark applications which have been filed in incorrect applicant names. The decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 clarifies the standing of the widely cited and followed decision in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196. Statements made by the Full Court in the Crazy Ron's decision have been relied on by some brand owners and attorneys as authority for the position that the requirement that the applicant be the owner of the trade mark can be satisfied at any time during the application process. The Full Court in Pham Global has finally given some clarity to brand owners and attorneys alike that these statements are 'plainly wrong'.

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