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Archive for the ‘Trade Marks’ Category

We are often asked, does it matter who the applicant for registration of a trade mark is ? It is essential that the correct trade mark owner be named as the applicant for registration of your trade mark.  Incorrectly naming the applicant can give rise to potential cancellation of the trade mark from the Trade Mark Register in the future.

The proper owner of a registered trade mark is either the first person to use that mark in Australia in respect of the designated goods or services (if that use is prior to the application to register the mark) or otherwise the first person to apply to use that mark in respect of the designated goods or services where that person intends to use that mark.

A person can use (or intend to use) a trade mark by applying the trade mark to goods or services themselves, or by way of licensing third parties to use the trademark.   Accordingly, if you are using a trademark under licence from someone else, you may not be the appropriate applicant for the trademark.  Instead, the person who licences your use (the licensor) would be the correct applicant for registration of the trademark.

You should also be aware that, prior to registration, the right to apply for a trade mark by reason of first using the trade mark flows with the goodwill associated with the trade mark,  for example, if you purchase a business but not the goodwill in the business, you may not have obtained clear title to apply for trade marks used in the business.  Clear proof of title should be assured prior to applying for a trade mark on the basis of first use.  If there is any doubt, you should obtain an assignment of the goodwill and the trade marks from any other previous and current users of the trade mark, prior to applying for registration.

It is possible that two or more persons have an interest in a trade mark so that they should be named as joint owners,  for example, use of a trade mark by a partnership or joint venture may give rise to joint ownership.  It may be advisable for the partnership or joint venture to incorporate a vehicle for the ownership of intellectual property and assign the trade mark and goodwill associated with it to that corporate vehicle.  That vehicle can then apply for registration of the trade mark and licence back the trade mark to the partners or joint venturers.

Before you apply for trade mark registration, think about who the proper applicant should be.

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The process of applying for registration of your trade mark, and obtaining registration of your trade mark has many advantages over non-registered trademarks, including:

1. registration of your trade mark can be obtained by you even if you haven’t used the trade mark – an intention to use is enough to obtain registration;
2. it is not necessary to prove the existence of a reputation in the registered trade mark in order to stop others from using it;
3. the TradeMark Register provides a simple mechanism by which other traders (or consumers) can see whether a monopoly is claimed by you over the use of your mark for particular goods or services;
4. the application process provides a simple mechanism by which you can determine whether your proposed use of your mark will likely infringe another’s registered trade mark;
5. you can give a notice to the Australian Customs Service, objecting to the importation of goods which infringe your registered trade mark.

Cooper Mills Trade Mark Lawyers can offer you advice and assistance in all trade mark related matters including registrations and oppositions.

Tags: Trade Mark, Trade Mark Law, trade mark lawyer, trademark, trademark lawyer
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Following a heated public auction on Netfleet, creditcards.net.au sold for a new record of $22,002 (plus GST) today, 3 February 2012.

In what is the highest reported .net.au domain name sale, creditcards.net.au was sold in an expired domain auction. The domain name was acquired by an Australian domain investor.

This sale is positive for both domain investors and small business owners who hold generic domain names.

Tags: domain lawyer, domain name law, domain name lawyer, domain name sale, trademark lawyer
Posted in Domain law and domaining, General, Trade Marks | Comments Off

The Australian Securities and Investments Commission (ASIC) has announced that the Personal Property Securities (PPS) Register will commence on 30 January 2012.

The PPS has been touted as one of the greatest legal reforms in recent times – the PPS has reformed the way in which personal property securities are registered. The PPS will incorporate all corporate charges currently registered with ASIC.

The PPS was to have commenced operations last year but was delayed.

For the first time the PPS will allow security interests to be registered over intellectual property.

We will write more about the PPS in the coming weeks.

Tags: domain name, Intellectual Property, Personal Property Securities, PPS, PPSR, Trade Mark
Posted in Domain law and domaining, General, Trade Marks | Comments Off

auDA has released the new Transfers (Change of Registrant) Policy (2011-03) to replace the previous transfers policy, following recommendations of the Secondary Market Working Group review.

The new policy eliminates the ’6 month rule’ which prevented the sale of a newly registered domain name until the expiration of 6 months from the date of registration.

While the new policy removes the ’6 month rule’, the policy maintains the restriction that a Registrant may not register a domain name for the sole purpose of resale or transfer.

The new policy also, now formally recognises on online paperless domain transfer process offered by some Registrars such as Drop.com.au.

Tags: auDA, auDA Policy, domain lawyer, domain name law, domain name lawyer, trade mark lawyer
Posted in Domain law and domaining, General, IT Law, Trade Marks | Comments Off