On 14 April 2020, the Full Court of the Federal Court of
Australia handed down an appeal decision with important
implications for trade mark licensing in Australia, and in
particular the licensing of unregistered marks.
In summary, key "take away" messages for trade mark
licensors from the case include:
- Rights to an unregistered mark may be owned by the manufacturer
of the goods on which the mark appears, not the company which
controls or licenses the manufacturer.
- Brand owners should register all distinctive aspects of product
packaging, in particular where products are manufactured by a
licensee.
- Unregistered trade marks cannot be assigned separately from the
business in which they are used, even within a corporate
group.
