Intellectual Property | Trademark Lawyer
 Alex Ferrante

Alex Ferrante

Director of Australian Patent & Trademark Services Pty Ltd.

I-MED: D.I.Y. Trademark Registration cancelled at Court

ANOTHER TRADEMARK REGISTRATION REMOVED – By Court Order

If you did your own Trademark Registration without a Trademark Lawyer or Trademark Attorney then look out. Or you found a cheap agent who filed it quickly without comprehensively checking everything you provided and your business, be careful. Your Trademark Registration cannot be “corrected” when you choose to enforce and even worse the Trademark rights could also cancelled.

WHAT ARE THE LAWS – WHAT SHOULD YOU KNOW

What happened here is an owner of a business thought that the Trademark Application process was simple. He filled out The Trademark Office, IP Australia Trademark Application online form, and then gained “Trademark Registration” 8 months later.

The Federal Court ruled that “small” errors in the application detail will void the rights allowing copycats to walk away without penalty.

The Trademark Office, IP Australia does NOT:

  1. advise whether the trademark you’ve lodged has the correct legal detail to make it enforceable,
  2. advise whether you business activities are accurately protected (i.e. did you leave anything out or cover the wrong class?),
  3. nor do they check whether what you’ve filed has fatal error(s) which will cause the Trademark rights to be void, or
  4. advise whether you have infringed another trademark, during the 8 month process.

And if you conduct an audit, these items cannot be rectified, a new trademark application has to be lodged, and that can a complete fail if you choose an Trademark Lawyer or Trademark Attorney to look at your D.I.Y. trademark application when there’s a copycat issue that you are seeking compensation from.

Only your Trademark Lawyer or Trademark Attorney agent will spend the time to get to know your business. A Trademark Lawyer also knows the Trademark Court cases, the correct legal detail, and advice to provide to you. A good Trademark Lawyer will go further to optimise the chances of Trademark Application detail to promote successful enforcement. The additional benefit is there is also a low chance of invalidation by the rival’s Trademark Lawyer not finding incorrect trademark application detail.

SUMMARY OF THE DECISION

This is a Federal Court decision between two parties, Tham Global Pty Ltd v Insight Clinical Imaging Pty Ltd. Here a  Trademark Application was lodged (and accepted) but failed to be enforceable in the Court of law because it failed legal requirements at the time it was filed.

Their Trademark Attorney corrected the mistake with IP Australia before going to Court, but that wasn’t good enough. The Federal Court Judge decided that as the Trademark Application was incorrect when LODGED, it should never have been approved. The Judge ordered the trademark to be REMOVED.

As a consequence, the owner was left with no Registered trademark rights for their brand (even though they paid for the trademark registration and renewal fees).

HOW CAN TRADEMARK ATTORNEYS HELP?

If you filed your own Trademark Application and think your brand is protected, OR if you filed with a Trademark Lawyer or Trademark Attorney but don’t continually audit to check consistency with business changes, then don’t hesitate on a Trademark Audit. If we find your trademark is invalid, or not broad enough scope to enforce, we will file a new one for you without the error(s).

Our firm can conduct a Trademark Audit, please fill out this form to get started.

In this case, the owner applied in his personal name to have the trademark registered, and not his trading structure. Failure to get the ownership completely correct, from the outset, can mean that your trademark registration is REMOVED since this Court decision.

SO WHAT HAPPENED IN THIS COURT CASE?

Mr Pham, who was the sole Director of a NSW company, applied (in December 2011) to register a trademark (the “insight radiology” logo No. 1463912) for radiology services in Class 44. In the trademark application, Mr Pham named himself as the owner of the trademark, even though it was his company that would be using the trademark, and his company had even paid for the trademark application.

InSight Clinical Imaging Pty Ltd (“ICI”) was the owner of a later Trademark Registration (the “inSight Clinical Imaging” logo No. 1517779), also for radiology services in Class 44. Since filing his trademark application, Mr Pham had assigned ownership of the trademark to his company and had registered changes to its ownership. At the time of the recent Court case, the listed owner of his trademark was his company, under its present name of Pham Global Pty Ltd.

ICI had challenged (opposed) Mr Pham’s trademark application, and were also taking action against Mr Pham and his company for infringement of ICI’s Trademark Registration No. 1517779 for the “inSight Clinical Imaging” logo.

After a protracted legal battle, the matter has now culminated in the Court’s decision that ICI had succeeded in both the opposition and infringement proceedings, and confirming that no further appeal by Mr Pham and his company will be allowed. In particular, the Court’s decision is that Mr Pham was never really the owner of the “insight radiology” Trademark No. 1463912, because it was never his intention to use the trademark himself. It was always his intention that the trademark was instead to be used by his company. Accordingly, as the trademark application had not been filed in the name of an entity which had actual ownership rights to the mark, the application was fundamentally flawed.

This fundamental flaw couldn’t be subsequently rectified by attempting to register an assignment to the real owner. Because of this error in stating the true ownership at the time of initially filing his trademark application, Mr Pham has lost all legal rights to his trademark (besides being liable for infringement of his competitor’s mark).

AUDIT BY A TRADEMARK LAWYER OR TRADEMARK ATTORNEY

A Trademark Attorney or Trademark Lawyer from our Trademark Firm should conduct a Trademark Audit on a regular basis.

Please fill out this form so we can start to represent you, and take away your legal stress.

Share this post

Share on facebook
Share on google
Share on twitter
Share on linkedin
Share on pinterest
Share on print
Share on email