TM: Correcting ownership errors post registration

At a glance

Policy ID: 145

Status: Identified for action

Priority: High

Trade marks

Issue summary

The full Federal Court issued a decision on Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 that found a trade mark not filed in the correct name can't be rectified under s81 or through an assignment. It established that ownership is determined at filing and only a true owner of a trade mark is capable of assigning it. The true owner is determined under S27 and if the wrong entity is entered as owner at filing they don’t meet the requirements under s27. The court also found in Vokes Ltd vs Laminar Air Flow Pty Ltd [2018] FCAFC at page 23 that the Registrar can only correct errors made by the Registrar under S81 and can't correct errors made by the applicant/owner/agent.

Comments

Technology impact: assuming that the name correction can be processed using the existing amendment request types, the technology impact should be low. There may be some low level changes required to Rights In One and correspondence templates.  If a new amendment request type/fee were to be introduced then this would increase the technology impact.

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