Banksy fight may paint a different picture under Australian trade mark law 04: Establishing ownership

This series of articles deals with the approach taken by the European Intellectual Property Office (EUIPO) to Banksy's trade marks and draws comparisons with the likely position in Australia. The first article outlined the key issues concerning artworks used as trade marks; the second article examined what "bad faith" means in an Australia context; the third article examined the intention to use as a trade mark under Australian law.

This article examines what is meant by ownership under the Trade Marks Act 1995 in Australia. As a practical matter, this issue most often arises in contentious proceedings, such as oppositions, non-use actions or when owners seek to enforce a registration against infringers who respond with a cancellation action.

Full Colour Black has opposed Banksy's Australian applications for two artworks on several grounds, including on the basis that the applicant for registration, Pest Control Office Limited is not the "owner" of these trade marks.

Owner of a trade mark

The Act requires that the applicant for registration of a trade mark must claim to be the owner of the mark. To be the owner of a trade mark for the purposes of the Act an applicant for registration must:

• be the author of the mark and use it before filing an application for registration; or
• be the author of the mark, file an application for registration and have an intention to use or authorise use of the trade mark.

Authorship

"Authorship" is not the same as "authorship" of a literary or artistic work for copyright purposes. The terminology seems rather strange when applied to trade marks that are neither new nor creative. The reason for this is historical: the first trade mark legislation back in the 19th century in the U.K. allowed only for registration of invented words to be used for newly patented products which themselves were inventive and had authors. The range of trade marks that can be registered has now greatly expanded and in this context "authorship" is interpreted as being the first to conceive of the "sign" in question as a badge of origin and appropriate by applying to register it for certain goods or services. Ownership then extends to any goods/services, rather nebulously defined as "the same kind of thing".

Ownership can therefore simply arise by filing a trade mark application but without ever having used the mark, even when the mark has been used outside Australia by someone else, provided it has not been used in Australia as a trade mark for goods/services of the same kind. In such cases however, even a slight connection with Australia might be sufficient for an overseas entity to defeat an Australian applicant.

The true owner and therefore the proper applicant for registration is the earlier in time of the person who uses or applies to register the trade mark (or one that is substantially identical) for the same kind of thing in Australia.

If an application is not filed in the name of the true owner, the application and any resulting registration is void ab initio and can be refused or cancelled. Invalidity cannot be rectified by assignment to the true owner.

The factual circumstances can often be complex and decisions made at the time of application about who will be the applicant can determine the fate of an application when opposed or a registration long after the application has been registered.

Real World Examples

In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83. Mr Pham filed for the trade mark in his own name when it was in fact used by Pham Global Pty Ltd, whose sole director was Mr Pham.

It was held that Mr Pham was not the true owner of the trade mark: he never intended to use the trade mark himself or to license it to the company. While Mr Pham had purported to assign the registration to cure this defect, that assignment failed because Mr Pham had nothing to assign, as the Full Federal Court noted:

"it is essential that the initial applicant on the filing date be the owner of the mark. Otherwise, the applicant cannot transfer ownership of the mark by an assignment."

In Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923. Monster Energy Company failed to establish that Rodney Jane Racing Pty Ltd) was not the author or first user of the following marks:

Monster bore the onus of establishing the ground of opposition. Notwithstanding the complex interconnected shareholdings and directorships of Rodney Jane with Bob Jane Corporation the Court was satisfied that Rodney Jane was the proper applicant (author and first user).

Relevant factors

• Ownership is assessed at the date of application for registration;
• The onus of proof lies on the person alleging that that applicant/registered owner was not the true owner at that date;
• Ownership can be transferred from the true owner either by assignment of a valid application or by assignment of common law rights (goodwill) which must include the underlying business;
• Caution must be exercised where a trade mark is used by different companies within the same group, where all have the same control and the same directing mind and will, but when the applicant for registration is not the first to use the trade mark;
• Ownership can be established if the trade mark in question is substantially identical with a trade mark that has already been used or registered by the applicant for goods or services or goods that are the "same kind of thing"; and
• Ownership based on first use can be established through use by a licensee.

Ownership: the EUIPO's position vs Australia

Full Colour Black has in Australia called into question whether Pest Control is the true owner of the trade marks. The EUIPO did not consider this issue.

Pest Control does not need to establish that it authored the artworks in a copyright sense. Full Colour Black will however need to establish that someone other than Banksy or Pest Control as Banksy's licensee was the first to adopt the marks for the goods and services in question in Australia. Banksy's failure to assign the copyright in the artworks to Pest Control does not itself mean that the applications are doomed. To make out this ground of opposition, Full Colour Black will need to establish on the balance of probabilities that Pest Control is not the true owner or authorised licensee of the true owner of the trade marks.

Related Insights

• Banksy fight may paint a different picture under Australian trade mark law 01: it's not just a question of faith
• Banksy fight may paint a different picture under Australian trade mark law 02: Making out bad faith in Australia
• Banksy fight may paint a different picture under Australian trade mark law 03: When is intention to use relevant?