Trade marks on the run

In September 2005, the Federal Court of Australia identified the degree of use sufficient (and indeed insufficient) to give rise to ownership rights in a trade mark.

The decision in Shahin Enterprises Pty Ltd v ExxonMobil Oil Corporation highlights the importance of early trade mark filing when preparing the roll-out of a new brand to ensure that ownership rights remain secure.

Ownership of a trade mark

Under the Trade Marks Act, any person who claims to be the owner of a trade mark may apply for registration. A registration can be challenged on the basis that the registrant is not the true owner of the trade mark.

In the past, the courts have indicated that a claim to ownership involves an assessment of three factors: