-- JonathanMo - 14 Sep 2015

Who can register a trade mark?

A person may apply for the registration of a trade mark in respect of goods and/or services if the person claims to be the owner of the trade mark, and one of the following applies:

Section 27(1) of the TMA says:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Note that only the person who 'claims to be the owner' can apply for registration (under the old law, it was not necessary for the applicant to show that they had actually 'invented' the mark, merely that they first adopted that mark as a trade mark). Where a person cannot establish that they own the mark by virtue of having created it, the person would need to establish that they have used the mark in the course of trade and acquired reputation in it. However, an objection to registration based on first creation is not of itself a ground for opposition; although a mark of such a nature may be protected by copyright.

The courts view this question in strictly territorial terms. Hence, even if a mark is copied from one in use overseas, a first applicant or user in Australia may become the owner of the mark for the purpose of first registration in this country. Although only very limited local use by a foreign trade mark owner in Australia may suffice to prevent registration of that mark in Australia by another party, the absence of such use by the foreign company will remove any remedy against local infringement. See First Tiffany Holdings Pty Ltd v Tiffany & Co (1989) 13 IPR 589.

TMA provides a claim for priority for a trade mark owner from a foreign country (if a Paris Convention country providing national treatment rights for Australian trade mark owners), where they apply to register the mark in Australia within six months of having registered it overseas. Section 60 of the TMA introduces ground for opposing the registration of a foreign mark in Australia if it has 'acquired a reputation in Australia'. In Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651, Fox argued that the success of the film Braveheart conferred proprietary rights on them, enabling them to prevent registration by Durkan of Braveheart the Musical.

Under section 27(3) of the TMA, an application must specify the 'goods and/or services in respect of which it is sought to register the mark'. The regulations to the TMA provides for the classes into which goods and services are to be divided for the purposes of the Act. Schedule 1 to the regulations sets out 34 classes of goods and eight classes of services in respect of which trade marks may be registered.

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