A registered trade mark gives the owner exclusive rights to use and/or license the mark for the classes in which it is registered. It also gives the owner the right to stop unauthorised users from using their trade marks, or stop competitors from using deceptively similar marks that may cause confusion in the marketplace. When applying for a trade mark, you should consider who is the trade mark’s owner and consequently, should apply for registration. We then take a look below who owns a trade mark in your business structure.
Entitlement to File
An applicant, whether an individual, group of individuals, or an incorporated body (such as a Pty Ltd or Limited company) can apply for a trade mark if the person claims to be the trade mark’s owner and one of the following applies:
- The person is using or intends to use the trade mark;
- The person has authorised, or intends to authorise another person to use the trade mark; or
- The person intends to assign the trade mark to a company that is created with the view that the company will use the trade mark.
The ‘rightful’ owner is usually the one that adopted the trade mark, or has permission to file on behalf of another. Another party can challenge your trade mark if they believe that you are not the rightful owner, or you made the application in bad faith.
The owner must have a legal status, such as an individual or group of individuals, or an incorporated company. A business name cannot own a trade mark because it does not have a legal personality. But who then is the owner?
Individual or Sole Trader
If the trade mark is used for the goods and/or services of an individual or a business (a sole trader), then the trade mark is owned by that individual or business owner.
If the trade mark is used for a company’s goods and/or services, then the company is the trade mark’s rightful owner. If the company is not yet incorporated, the trade mark application can be made in the name of the director/s of the company. Once the company has been incorporated, the director/s may assign the trade mark to the company.
If the trade mark is for the partnership’s goods and/or services, it is jointly owned by each partner. When filing an application, each partners’ name should be in the application or the members of the partnership may nominate a head partner to act on their behalf.
If the trade mark is used for goods and/or services of a trust, the rightful trade mark owner is the trustee on behalf of the trust. This is because trusts do not have legal personalities and cannot own trade marks.
If the trade mark is used by an organisation or group of people which has not been incorporated (unincorporated associations), then the group may only apply for a collective trade mark. An unincorporated association is a group of people who associate for a particular purpose. Examples of unincorporated associations include clubs, lobby groups, and some charities.
Identifying the owner of the trade mark is just one of the many considerations to think about when applying for a trade mark. It is very important the correct owner completes the application. A mistake in trade mark ownership during an application may result in unnecessary delays, additional fees or may even render a trade mark application or registration useless.
Questions about who owns your trade mark? Get in touch.