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A trademark is a form of intellectual property which helps distinguish your business from other businesses or trademark owners. When you register a trademark, you obtain exclusive rights to use that trademark for the goods and services that your business provides. To register a trademark, you must satisfy the requirement of ownership. This requirement is set out in s 27(1) of the Trade Marks Act 1995 (Cth) which provides that a person can apply to register a trademark if they claim to be the ‘owner’ of the trademark. You will be an owner of a trademark if you are the first to use the trademark in Australia. This article explains the concept of first use and how this requirement must be satisfied.

Are You The First To Use The Trademark in Australia?

As a general principle, you are regarded as the owner of a trademark if you are the first to use the trademark in Australia. It is important to note that you do not need to have used the trademark extensively to satisfy first use.

Interestingly, the courts have heard cases where an overseas based company had discovered that an Australian company had sold their products in Australia and subsequently tried to claim ownership of the trademark in Australia due to first use.

That raises the question: do you need to have a knowledge of first use to claim ownership of the trademark?

In E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010], the plaintiff discovered that their wine had been imported and sold in Australia by the defendant. The defendant claimed that the sales did not constitute first use by the plaintiff as they lacked knowledge.

The High Court held that the plaintiff did not need to have intentionally distributed or sold the products in Australia. The High Court ruled that first use does not require knowledge. This decision means that an overseas trademark owner can claim ownership in Australia regardless of whether they had knowledge at the time of first use.

Key Takeaways

Registering a trademark is a vital step to protect your brand and business. IP Australia will only grant trademark registration where you are the owner of the trademark. One helpful method to determine ownership is through first use. It is important to note that you do not need to have used the trademark extensively to satisfy first use. Rather, you just need to have been the first to use it.

If you would like assistance regarding trademark applications or have any further questions, speak with our experienced team of trademark lawyers. Call LegalVision today on 1300 544 755.


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