MichaelBuck IP

A Patent & Trade Mark Attorney Firm

Overseas Companies and Australian Trademark Rights

By Michael Buck

I was approached by a representative of a U.S. based electronic device manufacturer for advice about registering a new trade mark which they planned to use to sell their electronic devices into Australia.

During the course of our meeting I learnt that my client would have preferred not to re-brand their product but rather to simply distribute the devices under the same brand that they used in the U.S. and other overseas countries.

The client told me that they had to re-brand their product because they knew that a Sydney-based company had registered the brand as a trade mark in Australia.

Digging deeper I learnt that the Sydney-based company had originally been the U.S. company's Australian distributor and that they had registered the brand in their own name without the U.S. company's permission approximately ten years previously.

It appeared to me that the Sydney-based company's registration was probably made unlawfully and that it could have been opposed at the time but the U.S. company had never realized that this option existed.

I also learnt that the U.S. company was frustrated because the Sydney-based distributor had not performed well for them and in fact none of their product had been sold under the brand in Australia for over eight years.

I advised the U.S. company that it might still be able to secure registration of its brand in Australia in its own name by applying to have the Sydney-based company's registration removed for non use.

The U.S. company told me to go ahead and I simultaneously applied to have the Sydney-based company's registration removed and requested expedited examination of an application for registration in the U.S. company's own name.

The U.S. company now has its brand registered as a trade mark in Australia and good volumes of its products are being sold by an energetic local Australian distributor.

Some observations:

The first person, or company, to use a brand or logo in trade in Australia is generally legally entitled to trade mark registration.  In the present case the U.S. company's sale of the branded product into the Australian distributor qualified it as the legal owner of the mark.

Trade marks become vulnerable to removal from the trade mark register if they have been registered for more than five years and haven't been used at least once in the last three year period by the registered owner or an authorized user. 

If my client had not sought professional assistance but had simply applied to register the trade mark directly with IP Australia then its application would have been knocked back on the grounds that it conflicted with the Sydney company's registration.  IP Australia would not have investigated the U.S. company's background and would not have suggested a non-use removal action.