TRADE MARK OWNERSHIP NOTES
OWNERSHIP AND ENTITLEMENT
- Applicant must be the owner and use (or intend to use) the mark s27(1)
- Ownership derives from authorship together with first use or intended use, not from filing
- A distributor or local agent who registers the principal's mark is not the owner
WHAT COUNTS AS USE
- Use as a trade mark, to distinguish goods or services in the course of trade s17
- Use with additions or alterations not substantially affecting identity s7(1)
- Use in relation to goods means upon, or in physical or other relation to, the goods s7(4)
- Use in relation to services means in relation to the provision of those services s7(5)
- Authorised use is taken to be use by the owner s7(3)
REGISTRATION CAN BE OPPOSED ON OWNERSHIP OR USE GROUNDS
- Applicant is not the owner of the mark s58
- Prior continuous use by an opponent s58A
- No intention in good faith to use the mark s59
- Application made in bad faith s62A
AUTHORISED USE AND CONTROL
- Use is authorised only to the extent it is under the control of the owner s8(1), s8(2)
- Quality control over goods s8(3); control over provision of services s8(4)
- Control means actual control as a matter of substance, exercised from time to time
- Contractual control rights, if unexercised, are insufficient
NON-USE REMOVAL
- Removal of registration available based upon no use or no intention to use s92
- Onus rests on the opponent to removal to rebut the allegations of non-use s100
- Registrar may decline to remove where it is reasonable to do so s101(3)
IMPORTANT
- An application by a non-owner is invalid from the outset and is not cured by later assignment
