ANOTHER TRADEMARK REGISTRATION FAILS – The Court orders the Trademark Office to remove the trademarkIf you filed a trademark and expect a Trademark Attorney to later patch it up, forget it. This Court case demonstrates that is NOT a possibility.Or if you think the Trademark Office advises and checks on legal errors, you may be headed for a disaster as was the case in this recent Federal Court decision: Tham Global Pty Ltd v Insight Clinical Imaging Pty Ltd.This is yet another example of an incorrect trademark being registered by the Trademark Office but failing to provide enforcement in the Court of law because it failed legal requirements at the time it was filed.Their Trademark Attorney corrected it before going to Court, but the Federal Court Judge decided that as it was incorrect when LODGED, it should never have been approved. He 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).
TAKE HOME LESSON:
If you filed your own trademark right and thought your brand is protected, OR if you filed with a Trademark Attorney but don’t continually audit to check consistency with business changes, then don’t hesitate on a Trademark Attorney 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?
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).
Our firm can conduct a Trademark Audit, fill out this form to learn more.