If you are not the first entity to use a particular trade mark in Australia, then you are not the owner of that trade mark and your application will be invalid. If you think your trade mark was filed in the name of the wrong entity, then you will need to file a new application in the name of the true owner.
Your application will only be valid if you are the author of the trade mark and you are:
1. intending to use the trade mark; or
2. authorising (or intending to authorise) another person to use the trade mark in relation to the relevant goods and/or services; or
3. intending to assign the trade mark to a body corporate that is about to be constituted with a view to the body corporate using trade mark.
In the case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, Mr Pham was a director of Pham Global Pty Ltd.
He filed a trade mark application in his personal name and gave evidence that he intended to license the trade mark to his company.
However, a previous application for the trade mark had been filed in the name of Pham Global Pty Ltd.
The the trade mark had been designed on behalf of Pham Global Pty Ltd, not Mr Pham (although he was consulted and made decisions about changes to the design). The domain names and previous trade mark registrations were owned by Pham Global Pty Ltd.
After the trade mark application was opposed on the basis that Mr Pham was not the true owner of the trade mark, Mr Pham assigned the trade mark application to Pham Global Pty Ltd.
Mr Pham was not licensed to personally use the trade mark. Pham Global Pty Ltd was the first to use the trade mark.
The trial judge found that, at the time the application was filed, Mr Pham intended that Pham Global Pty Ltd would use the trade mark and the company did in fact use the trade mark. The trial judge also noted that Mr Pham did not pay much regard to the corporate structures under which the business activities were carried out.
The Full Federal Court held that, although trade mark applications can be assigned, a deficiency in ownership cannot be overcome by assignment even if the application or registration is assigned to its true owner.
This is because a trade mark applicant's claim to ownership is considered at the time the trade mark application is filed and only the true owner of a trade mark is capable of assigning the trade mark application.