Sign Mississippi Trademark Assignment Agreement Fast

Document type sign trademark assignment agreement mississippi fast

you welcome everybody thanks for joining us today I understand that a lot of you calling in from home given all of what's going on with corona virus and hopefully our system and your systems work but we do have somebody online so if you've got any questions you can send through a help question to them so let's get started because today I'm going to be covering quite a bit of content in relation to trademark ownership and control so we will be going through a few cases so if I can go through few cases with you the first one well if it's a few cases five that I'll be covering today and then at the end of the presentation I'll do a bit of a summary as to some key observations and some key takeaways so because the contents a bit heavy we'll move fairly quickly so the first one I want to look at is around sorry if I can just pause for a minute and say that we were looking at these cases because there's been a fair few you can see the dates they're in 2018 and 19 that have come through in relation to the validity of registered trademarks being challenged and it's either because it's in the incorrect company name or because the use hasn't been considered valid because it hasn't been under the control of the owner and that can have quite significant consequences it could mean the removal of your trademark from the register or it could mean that you may not be able to enforce your rights so that's why we're having a closer look at what's required and one of the key sections that it's important to understand for these cases that we're going to discuss today is Section eight of the trade marks act and that section is where we see it hear this phrase under the control of the owner so a person is only an authorized user if they are using the trademark under the control of the owner and the use that they might have evidence of is only going to be valid or evidence abuse if it is under the control of the owner so we have a look at the first case this is going back a little bit so I'm hoping that some of you are already familiar with the facts and the case is lodestar and Kemper Murray and originally the name was sky spirits but they changed their name partway through so hopefully that doesn't confuse everybody so in this case there were a number of parties there was the wild turkey interest and the Irish whisky interest who were having a bit of a ongoing dispute and there was mr. Sullivan who was in he was a barrister knees down and Seth in South Australia and he had winery and there was a wild geese trademark registered to Irish whisky and unbeknownst to Mr O'Sullivan he didn't know that existed but he filed his marks as well for wild geese and wild geese wines he received an under adverse report and he then thought that he might seek to remove the trademark registered by Irish whiskey and when he was investigating that he realized that there was an ongoing dispute between wild turkey and Irish whisky which he didn't really want to be a part of so he noticed that because wild turkey was in a non use dispute with Irish whisky already so what he decided to do was a sign his he got in touch with wild turkey and he decided to assign his trademark application to wild turkey in exchange for a license back and that way he was planning on going on with his winery down in South Australia and exiting the dispute so here you received your license back it wasn't a very comprehensive license but he got on with selling wine I've actually my slides are a little bit out there they say he was selling whiskey but if what he got on with doing was selling wine and ultimately and wild turkey took over the non-news proceedings so non the non-use was effective and Irish whiskey had its mark for wild geese removed the mark that Mr O'Sullivan had originally filed and had then assigned to Wild Turkey through the application that was filed and then assigned to Wild Turkey was then registered and Irish whisky because the dispute was continuing in other areas they waited the requisite three years for an honest removal it might have been five years in this case because back in the day we had to wait five once mark was filed and then Irish whisky sought to remove the mark that had been filed missed by mr. Sullivan so though mr. Sullivan's busy selling his or using his mark for wild geese in South Australia Irish whisky has filed non use proceedings against the application held by wild turkey and the court had to consider was Mr O'Sullivan using the wild geese mark on his wines under can under the control of the wild turkey interests company so very confusing facts I hope you were able to follow them all you've read the case before so while toki argued that they had a license agreement in place with Mr O'Sullivan and it was a pretty skinny license agreement it had some provisions about mr. Sullivan not using the mark outside Australia and it had some requirements that he could not amend or abbreviate the marks and it said that if they requested he would need to provide a sample of wines to them and some analysis would be undertaken to make sure that they were of export quality so they never requested any wine samples from Mr O'Sullivan basically the agreement was drawn up and he put it in his drawer and they put it in a drawer and they just each party got on with their business so they tried to argue that the License Agreement should be enough and that they had the ability if they needed to to stop mr. Sullivan using the mark if he stepped outside the terms of a license agreement so in theory they were saying they had control and just as Parham was of the view that they did not have any actual control that he looked at the evidence and he said well I've got the document but other than the document there's no evidence of actual control there's a question about what the requirements of the Act were and just experiment Arum said there was a previous case called Yale's entertainment and in that case just experiments interpretation of it was that it might have meant that theoretical control having an agreement between the parties was enough so he thought he was bound by that full court decision and yaws entertainment and and so he then made a finding in this case with loads are saying that theoretical control might be enough in the sense that if he if mr. Sullivan steps outside of that license agreement then the license agreement was enough to prevent using the trademarks now the issue with that is that justice param had the interpretation of y'all's entertainment incorrect but we'll discuss that in a second and he his interpretation was not quite right because in Yale's entertainment it was a it's an old case but it involved video videos being made and the person making the videos had to actually ensure that the video being copied was of high standard so in that case called the quality control checks and balances were considered to be actual control so on appeal of court for court said or just experiment was saying about theoretical control was wrong and they said that in rouse entertainment there was actual control and what is required in this case considering the world key swine's trademark if the actual control from time to time over the mark so there must be control as a matter of substance and it's not enough to have a license agreement with some standard provisions that he's put into a draw and nobody pays any attention to so that was the 2016 case and that sort of set the benchmark for what is required then there was a little bit of a gap and while everybody absorbed that information and then there was a flurry of cases over the last 18 months as to the application of that finding in in a range of circumstances so I've got three that I'll go through one is the case of calico global and calico it's going to get really confusing because a lot of these cases there's a fight over the same trademark and so the names are actually very similar so this one here it's a trademark for calico and applied for in relation to class 41 which is your entertainment and education services as well it covered information in relation to fitness so class 44 is your medical services so calico LLC is an American company and they were trying to get themselves registered in relation to calico class 44 for medical services there was the existing registration owned by calico global I'm going to call them global just so that we don't get confused and it was in relation to it with on the register in relation to this class 41 and 44 so at the trademarks office level the delegate of the Registrar decided to remove the calico globe or um Calico global trade mark course the delegate was of the view at least in relation to class 44 the delegate was of the view that there was no use in relation to the medical services there was some limited use in relation to fitness and to class 41 remained but the American company really just needed to get past 44 out of the road now the reason why we were looking at this case today is because of the structure and it's really important to understand the different structures with companies and how it can affect the authorized use requirements for trademarks so this particular manner involved Kevin Owens and he applied for the culligan calico trademark in 2004 so that's fairly standard he was operating as a sole trader at the time later in 2006 he set up the company calico Pty Ltd and that company he owned half about 50% of it with his wife and he was joined directed with his wife and but he was the managing director so everything's still fairly ordinary at the moment that company Pty Ltd was then using the Calico trademark so the trademark was later sorry so calico PTY ltd then set up a another company a subsidiary company which was calico global Pty Ltd that was in May 2011 and that company started using the mark then you can see from a slide that it's got a number of shareholders within coming on board and there was Kevin Owens who has remained the managing director but also other directors involved now at that time the trademark was assigned from Kevin Owens to calico Pty Ltd and then calico Pty Ltd put in place an exclusive license to calico Global mr. though wasn't updated and so on the trademarks register it still had the trademark in the name of Kevin Owens even though the league the beneficial owner was caliper Pty Ltd in calico Peter yld had been acting as an owner by putting in place an exclusive license agreement so it's a little bit tricky then so I've drawn this timeline up so that people can understand the non-news period because as everybody knows we if you file a non-us application the non-use period runs for three years ending one month prior to the non-us application so when you overlay that on the timeline with what Kevin Owens was doing he had the mark in his name and he was using it himself and then there's a small period of time at the start of a non-use period relevant non-news period for this matter where he was using it and it was in his name and everything was okay then there's a big chunk of time during the non-news period where the mark has actually been assigned to calico Peter Walter D but it still been left in his name on the register and the register was not updated until after the non-use proceedings had been filed the issue was whether Kevin Owens who's the party on the register had actually had actual control over calico Peter World Houdini's use and then a second issue was whether global was using it under the control of calico Pty Ltd and there wasn't any evidence of actual control in this situation and you might recall at the start I mentioned in relation to the class 44 services medical services there wasn't any evidence of use this guy Kevin Owens was basically a fitness instructor so he was doing things in class forty-one and calico the American company is in relation to medical devices and vaccines and things like that so when he saw them getting bigger and bigger and might might have wanted to use the mark he then started to try and put on his website some medical services or things that looked like medical services but he did not have actual use in class 44 so what he was arguing though leaving aside the fact that he didn't have use was that he was arguing that as a managing director of calico Peter well two DS if I drove back aspire to you can see the structure he was arguing that as a managing director he of calico Peter well today he was able to exert control over global and that that way he had control over Global's use of the mark and the problem though was that it was still in the name of Kevin Owens so the the court rejected the argument and they said that calico Pty Ltd is a distinct legal personality from that of its officers including Kevin Owens and by assigning the mark the calico mark to calico Pty Ltd mr. Owens was in fact precluded from using the mark himself so that he actually had given his rights away the rights whole was calico Pty Ltd so Kevin Owens himself could not have been the party exercising any control and the fact that if you have a look at okay was calico Pty Ltd controlling used by global the fact that he was a managing director was not enough so that ownership structure did not of itself show control they said the difference is the court said Justice prairies said that the differences in the shareholdings in global and calico demonstrated that Calico was not that sour calico global was not under the control of Peter Houdini which was not under control of Kevin Owens so little bit messy for calcio global Kevin Owens and calico Pty Ltd so as I mentioned earlier the fact that there had been an assignment in in between actually precluded Kevin Owens who was the party on the register from being able to say that he had any control whatsoever and it was calico in when you looked at the evidence it was calico Peter whale to do that with exercising the rights of an owner when it entered into the license agreement with global it actually said that in the document so all of those things meant that the person on the register could not have possibly been controlling the mark now in this case does that mean that if you fail to update the register are all things lost I would think possibly not because in this case there was there's the extra question about should the court exercise discretion now if if you had done everything right and there was control and there was use but you'd fail to update the register then that might be a situation where you can say to the court that discretion should be exercised because there's just been a procedure an administrative failure to update the register but in this case there was no use of the class 44 medical services so the mark there was no reason to exercise the discretion and the mark was removed so let's have a look at the second example of Hells Angels motorcycle corporation and RedBubble and looking at it again because it's a different structure and it's important when you've got a corporate group and try to organize licensing and within the corporate group or perhaps you've got a corporate group and you need to look license out to licensees or franchisees this different structures are important to so this particular case is quite a long one by justice Greenwood a majority of the the case deals with copyright infringement but I'm not going to talk about that today I'm just going to focus on trademark infringement and it was a trademark infringement claim by Hells Angels Australia against red bubble and red bubble cross claimed in the proceedings to try and remove the Hells Angels trademarks and try to get out of infringement that way for those of you who aren't familiar with RedBubble it's a global online marketplace for print-on-demand products what i mean by that is that they have a platform where you can upload images and you can have that image reproduced on t-shirts cups mugs whatever it is that you're seeking whatever merchandise that it is that you're wanting to produce and they will do it for you so RedBubble got themselves into trouble in this case and another one predominately to do with copyright infringement because people were obviously downloading images off the internet and uploading them onto my bubble and manufacturing arranging for the manufacturer of heated merchandise so hat was primarily the heart of the case but trademark infringement was an element that Hells Angels had Massoud said justice Greenwood had a look at that and so background in relation to Hells Angels motorcycle club and what justice Grimwood called them he said they were a group of motorcycle enthusiasts riding around on their Harley Davidson motorcycles and the history with that club is that he set up in San Francisco and what they had originally was charters so that was back in 1948 and they're quite a lot in California and then eventually it got more and more popular and they created the Hells Angels motorcycle corporation in the US and they had their famous death head logo and as well the corporation or the the child has expanded into Australia so in Australia there was also different clubs if I can call them up that they set up in Australia and then eventually turned change into corporate entities it's on the slide that I've got up now that's just showing you the trademarks that are registered in Australia by the US entity so there's three three three device marks and two-word marks and those have been registered you can see the dates there for quite some time now an important point in this case is that the proceedings were instituted by the Australian entity Hells Angels Australia not the US entity so that has some implications which we'll discuss shortly I've just put some pictures up as pictures always break things up rather than lots of words so these are the images that were being uploaded onto the RedBubble platform and justice Greenwood was of the view that three out of the four constituted trademark infringement he formed the view that there one in the top right corner with the Hells Angels motorbike II and the little girl sitting down was not trademark use per se and so given it didn't constitute trademark use it couldn't be a trademark infringement but the other three he said were trademark infringement so he had to then go on to consider the various issues in relation to the trademarks infringement claims so like I mentioned earlier the proceedings were instituted by the Australian entity and there's two issues that that caused one was that entity if it's an authorized user has the right under the trade marks act to institute proceedings now if you've got a trademark license and you've prepared it up and you've given third-party right to use the trademark that third party they're an authorized user will have the right pursuant to the act that bring proceedings without your permission unless you've taken that right away now in this situation Hells Angels Australia had the right it wasn't taken away from it and in fact they had instituted proceedings in the past so they've claimed to be an authorised user and RedBubble was trying to dispute that they are an authorized user to try and prevent the proceedings continuing by the Hells Angels Australian corporation so the second question if justice Greenwood did find that they were an authorized user and had standing a second question then followed on was whether the use by the Australian the entity in Australia was under the control of the American entity and to show that they were an authorized user because if they were not then their use did not count for the non news proceedings and perhaps then there would be no use in Australia and if that was the case then the non news proceedings the cross claim for the non news proceedings would be successful the mark would being removed and that would then mean that RedBubble might be able to get out of an infringement claim so this Greenwood had to go through and have a look a close look at what was going on between Hells Angels in the US and Hells Angels in Australia now there was a lot of evidence I'm given by some by Keith who were about 80 years old it was quite an entertaining read and they said which is not surprising that they didn't have any written manuals or guidelines what they did was normally oral and this is in relation to the use of the trademark but they were pretty organized and they had a license agreement between the two entities so the license agreement was in 1987 originally and then it was updated in 2010 and in that license agreement he gave the exclusive license all right for the Australian entity to use the Deaf head logo and the Hells Angels trademarks and the use of the trademarks had to be consistent with the standards that they said from time to time now the evidence was that any restrictions and standards for us are all there were no sort of emails going back and forwards between these motorcycle enthusiasts what they did was are all but nevertheless there was a license agreement and as well cause eight said that the Australian entity had to report the u.s. entity about the use now justice Greenwood applied the lodestar decision which said that having a license agreement is not enough you have to actually be looking for whether there's actual control or a connection between the use of the trademark and the registered only now the evidence showed that there had been control over use of the patch the death had logo on the patch and there was quite rigorous control around where it had to be placed in the layout of it and they had to be standardized stitches there was also evidence around the creation of a new death head logo in electronic format because one from the 1950s was they found that there wasn't consistency in the stitching and you know as technology improved they needed to have an electronic patch or image that could be applied in a patch now to clothing so there was actually evidence of that control even though nothing was in writing there was also in Australia the gentleman who was responsible for merchandising he had a little bit of trademark experience fortunately and he knew that the license required reporting back so there was evidence in 2011 and 2014 where he had unilaterally reported back to the u.s. entity about the merchandise and activities that they had been doing in Australia and in 2011 in particular he was reporting back in relation to proceedings so all of that was really good evidence of all the parties working together and even though there was a License Agreement there was additional evidence of controls around the quality and presentation of the patch though justice Greenwood said there's no doubt that the u.s. entity imposes very particular controls around this putt and if you take into account the nature of the organizations and and you've got this Agreement in the background as well he made a finding that there was common ground or it was not necessary for the US entity to be given be giving directions and instructions all of the time because of the closeness with which they are operating and the nature of the entities so things that he took into account he said there were brothers in arms there are primarily domestic identities he said they were behaving and understanding their respective roles so that Hells Angels Australian entity was behaving as an authorized user and reporting to the US entity and all of those things taken into account he said he seemed to know he said I don't see any reason to depart from what seems to be a relationship where there is obedient to the trademark owner and he said that was so intuitive and so complete that no formal instruction was necessary so when I looked at those words I thought oh if that whirring just because we're dealing with a bunch of motorcycle enthusiasts or is there something more to those words now I had seen them somewhere before and they had were used in the Loadstar case the first case that we talked about and in that case in lodestar the court there was talking about control being a question of fact and degree and that you need to look at the evidence and sometimes you'll have a complete lack of control where the license or has given rights to the trademark and then just doesn't do anything else and there's other cases where the license or has you know is constantly monitoring use of the mark it may be very rigorous license agreement in place with Bren glide guideline so there's this varying degree and two words justice Greenwood has picked up on there and not just because he was inspired about the relationship between a bunch of motorcycle enthusiasts he was actually picking up on something at lodestar and it's something to consider it's time so I'll go through the third case now and just give you a look over that one like I mentioned earlier I'll do a recap at the end about some of these key points so this case next case that one wanna have a look at is trident seafoods cooperation and trade him food so again very difficult with the wording because i'm going to say the word tried in about 40 times so bear with me while i work through it so we're dealing with some trident trademarks that were on the register in the name of trident foods so the three trademarks that you can see at the top two of them were in relation to class 29 which is fish and fish products the third one that they owned was in relation to class 31 grains then Trident c4 roots came along and they wanted to register Trident seafood it received a citation and was not able to proceed because of the exert pre-existing marks for Trident and Trident seafood then applied and filed from non-news proceeding that the trademarks office level to try and remove the Trident marks owned by Trident foods there we go see I said Trident at least eight times so that was at the trademarks office level and the delegate decided that there was no use in relation to that class 31 grains trademark and that mark was removed so it didn't that there was no dispute there's no use that mark got removed it wasn't part of the appeal the delegate at the trademarks office decided that there was some use in relation to fish and fish products but determined that it was not under control so the delegate had actually thought that it that they'd exercise the discretion so it went on appeal and if we have a look at the structure because it went on appeal in relation to use and also in relation to control if we have a look at the structure this one this is quite fairly standard when you look at it at first blush in that you've got one company and another company's wholly 100% owned but in this case it was a little bit different because Trident food had owned the mark Trident and it was selling products under the name of Trident but then into thin mm medicine foods acquired Trident food and when they acquired it they cried the mark and what happened was Trident food stopped selling the product and medicine food started selling the products so that caused a situation where Trident through with the owner and medicine was using the mark but Chardon food was a subsidiary of medicine so the question was whether the subsidiary could control the parents use of the Trident mark and whether that would then constitute authorized use and as you can see there there's common directors in this particular scenario now these companies did have they're part of a bigger corporate group and bright food global distribution company owned them both but I've left that off because it just is not really relevant to the immediate structure in this case there was a license agreement but don't be fooled by that it was signed about two days before the trial and it was a classic case of lawyers doing some fancy drafting and the recital said that there had been an unwritten license agreement in place since 2000 and that medicine was the authorized user of the trademarks so sort of some unilateral assertions to try and make it look good but at the end of the day the authorities have shown us and we've talked about at least to this morning where the License Agreement itself is not enough so it really came down to what were the evidence that was given by the directors and Miss Watson gave some evidence that she thought she could ensure control because she was a director of both of the companies and she saw that she had a fiduciary obligation to act in the interests of Trident food and she because of her position as director on both companies could see whether or not medicine foods were selling the goods of a high standard and if there was any concern about the use of the mark or the Goods not being of appropriate standard then she would have intervened and she also gave evidence to say that at the ADM the directors would meet and have a look at what was going on in relation to the use of the Trident marks and what products were being sold and they would sign off at the end of the year so just let's go listen at first instance had a look at that and said that she didn't think the corporate relationship between China dudes and medicine was enough that that relationship was not enough of its own and then when she looked at the evidence by miss Swanson her concern was that it was in the nature of the assertion of assertion it was sort of about what she would do if something was wrong not about what she was doing in terms of monitoring and keeping track of the mark so Justice Gleason said that there was not authorized use and but she did recognize that within this corporate corporate group there was use of the trademark by medicine and she exercised her discretion to keep those marks on the register so then there was a further appeal to the for call because this Trident seafoods corporation was obviously not happy that the mark stayed on the register and Trident foods were still not happy that there was this suggestion that the corporate group and the structure in that forum meant that they could not be control so if you familiar with the trade marks act you will be aware that there is a deemed control provision so you deemed to have control if the use is by a subsidiary and the parent owns a mark so that one just try not to be confused with this case that I'm telling about in that provision so if you have a situation where there's a parent corporation and the marks owned by the parent and it's used by a subsidiary then that if deemed control under the trade marks act this case is where the reverse is at play so the subsidiary is the owner and the parent is using or it might be sometimes in a corporate group maybe one of the companies in the corporate corporate group is using it but another company maybe with different directors but maybe ultimately owned by a similar entity is using it so when you have that situation this case might be relevant so on appeal Trident Riggs argued that there was an actual control and that loadstar the case that I talked about earlier and the first one had to be followed and loadstar in that case talked about control being a question of fact and degree meaning that there must be some cases where if you've got there might be cases of course where the license or has no regard absolutely with what the licensee is doing but there must be other cases where perhaps a licensing agreement is in place with brand guidelines and there's obedience to the trademark owner either because of that or maybe here they were arguing that the corporate group common directors meant that there must be obedience to the trademark owner in the full court agreed and they said where you've got a situation where you've got this corporate structure it's not about whether the trademark owner so Trident foods was owned by menacing and that that that it was not about this fact that because it's a subsidiary it therefore cannot control so that's that's that's wrong that conclusion you can't jump to that conclusion you have to have a look at whether the subsidiary exercise control over the trademarks by the parent and in this case where there was common directors and common ownership they they said that was a situation where they talked about unity of purpose and that control could be inferred because of the common directors in the common trading activity and common purpose so they they sort of set to one side the parent-subsidiary relationship and said where you have that common purpose within your corporate group then it will be considered to have control from a trademark perspective so that is really helpful because there are a lot of corporate groups out there they were getting nervous because they had trademark sitting in one entity and it was b ing used by another entity but if the companies have unity of purpose then the requirement to actually demonstrate actual control might be then rendered redundant if you've got common directors common purpose then you should have enough to satisfy the authorized requirement Oh in that case sorry to finish it off medicines you turned out it was authorized use and they actually had use of the mark so therefore the mark stayed on the register and trading secrets with not able to secure was not successful with non use and was not able to secure registration so I'm gonna jump now to before I do my summary and recap I'm going to jump to one other case that has come up at the 2017 full court decision and that's because if you can remember back to the one of the first slides where I talked about section eight I talked about authorized use requiring demonstration of control but it has to be unbiased estimator so it's controlled by the owner in this case fam global is about who is the owner of the mark now at the moment we've seen decisions where people attacking people are attacking trademarks for non use and control and we've just seen cases where people are attacking marks because and they're invalidating them because they're saying that a party is not the true owner of the mark and I think it's only a matter of time that we'll see cases involving a combined attack and I say I think but actually I argued a case last year so hopefully we'll see a decision on that if the judge has an opportunity to write it now that we've all got coronavirus you might have some more judgment writing time so I think that we'll see cases depending on the facts where people will argue a two-pronged approach so there's fam global case I've been a little while ago I'm hoping that some of you are familiar with the facts and this case involved a clinic in Western Australia called inside clinical imaging they were using their mark since 2008 on the other side of Australia and New South Wales mr. Pham applied for registration of a trademark for insite radiology very similar so he was smart he did apply first and then subsequently the company inside his company inside radiology started using that mark now it was originally called Pham global the New South Wales company it was called Pham global and later it changed its name to insult radiology closer to the proceeding so again I'm gonna have to say the word inside about 15 times but I'll try to do it slowly so I don't get everybody confused so mr. Flamm mr. Pham applied for his mark he kept it in his name he then had his company in site radiology operating in New South Wales using it and then the waa crowd worked out something was going on they ran off and filed an application for their mark inside clinical imaging in October 2012 and then they received a citation and that first report and they sought to oppose mr. famines application now during the course of that opposition proceedings mr. Pham quickly assigned his marked insite radiology and changed the company name from Pham global to insite radiology to try and make it look like everything was ok with the application and in order so that mark was found to be substantially identical by the trademarks office in the forecourt and the question that was before so it went on appeal and I'll just talk from the full court level because I don't have time to go through all of them so the evidence at the court and the the ground of opposition was section 58 which is that mr. pham was not the owner of the mark because somebody had earlier in time used a substantially identical trademark now there was an analysis about whether mr. pham was the owner of the trademark or whether his company in site radiology was the owner of the device and so when they looked at the evidence of the case it came out that mrs. fams and mr. fams wife had actually come up with the idea for the name of the company and but the evidence also showed that the image the logo in site radiology was designed by a third party and that the company found global or insult radiology PTY ltd had paid that third party to develop that logo there was no license agreement in writing between mr. pham and inside radiology and inside radiology had also secured domain names in its name so the company had gone and acquired domain names and had been using the mark since March 2012 to mr. pham had never himself used the mark and his evidence was that he didn't intend to authorize the use so sometimes and it's not it wasn't said by mr. Pham in the witness box in this case but sometimes people have filed marks in the name of perhaps an individual or another entity to try and hide them on the register particularly for brand launches and in this particular case mr. Pham didn't say that was his purpose but he did say that he it wasn't intending to authorize the use and when the court had a close look at what was going on they said well insight radiology actually owns this mark it it created it went to a graphic designer at least for the device logo in the copyright for that logo vested in the company so the word is a little bit different because the word can be created without a use of a graphic designer but it all of these things pointed to the fact that it was insight radiology PTY ltd that are in the mark and not mr. Pham himself and it was not it was owning the mark and using its own mark and mr. Pham was not doing any authorization of use so if we have a look at what the ownership requirements are in the act the person who can apply for a mark has to be the patent so the person when they file an application it has to be a person claiming to the owner and that person must be intending to use it who is using it or intending to authorize the use or is authorizing it at the time of filing now that actually say the words at the time of filing in this case had quite a bit of discussion about whether it was at the time of filing or not because mr. pham had had assigned the mark out of his name and into the name of insight radiology during the opposition process and was of the view that as long as he fixed it up before it was registered it didn't matter and as long as he got it out of a pewter name and into the right entity before registration then it would all be fine so there was a discussion about that and oh I'll just jump forward basically I'll just give the answer but I'll tell us the answer is you can't can't do that so the the date that's relevant is the date of filing so if you don't have it right and in the right persons name at the date of filing then the registration is invalid can't be fixed afterwards so when we look about who is the right person to have it in the name of there's two basis to be an owner of the mark we can have common-law use so if we can call it old-school use you've created the mark and you're using it then you've got authorship in the sense of first adoption and use of the mark the second type is where you have an application to register and you have authorship in this sense that you have adopted the mark first and then you file an application with an intention to use it but you you might not have use yet so that combination is what catches people some time because sometimes the the adoption or the authorship might be in another entity or by another person and it has to be with the party who's applying for the mark at the time of filing so when the court had a look at the purported assignment from mr. Pham they said it was irrelevant because it what needs to happen is it's got to be correct at the date of filing so the subsequent assignment didn't correct it and even if the assignment was allowed then they said the assignment would have no effect because I said mr. Pham is not the owner he didn't create the mark in site radiology created the device at least by engaging that third party and if the mark was created it was done probably by directors in their capacity as directors who had fiduciary obligations to their company and therefore it's it's within the company and owned by the company so mr. Pham assigning the application across to the company would have no effect because he had no rights to assign in the first place so it wasn't an argument in this about whether mr. pham had control over the company but I think that the case like I said earlier can be extrapolated to a situation where it's got to be under the control of their owner and maybe when you sit when they talk about the assignment they say the assignment would have no effect because mr. pham is not the owner well I think that can be extrapolated to authorized use and that authorized use would have no effect would not be valid if it's not by the owner so the court hasn't exactly made that yet but we'll see what happens with my case and when decisions handed down so let's do a sort of recap and some of the observations about this case in particular that where you've got control these issues of control and and by the owner I think it's important not to conflate the two tests so one is about who's first adoption and authorship and the other is about corporate group structuring unity of purpose and having actual control or if you don't have unity of purpose having actual control so they're they're two different tests and I have seen situations where people model them together and they argue corporate group structuring arguments in relation to section 58 arguments and I think it's important to separate them so and I think and we have there's no cases yet but I think we'll see more cases along this nature line because people are trying to get out of trademark infringement by arguing these points I think there's going to be situation where they might be a valid mark on the register that might be used by an entity within a corporate group and there is used as a mark but the owner of the names incorrect and maybe it hasn't sorry is correct sorry no owner of the name so if you think of a calico go global example where maybe the mark has been assigned and there's been an incorrect party sitting on the register it's just an administrative blue bar but there is use and there is a valid owner using the marker I think that situation you might see in non news proceedings the court would exercise discretion to allow the mark to remain on the register and then it's just a formality of updating the owner on the register where there's a situation where the person on the register was the invalid owner and was never meant to be the applicant in the first place my view is that the court is probably unlikely to exercise the discretion to allow that registration that invalid registration to remain on the register so leave that's that's one that would actually be removed even if there was use so let's recap keep key takeaways so I see some questions popping up so I will try to get to them in a moment just got a couple slides to go to slides to go we're almost there so key takeaways in relation to control is that it's a question of fact and degree so theoretical control having an agreement and just hoping that you could enforce some provision there's not enough but it is a balance because you might have an agreement in place where you have brand guidelines in a very close relationship between the parties and those brand guidelines might stipulate with rigor what is to be done that closeness that that document though will not of itself be enough you'll have to still demonstrate evidence about the closeness between the parties and how that they might believe they have an obligation to report back or to use it in accordance with the brand guidelines you'll still have to show evidence of the closeness of the relationship the best thing to do though is to if you're a brand owner to periodically check in to make sure that your licensee is doing the right thing and following your brand guidelines and that check-in should be at least once every three years and better to just do an annual reminder if you're the licensee and your life and saw isn't checking in on you do what they did in Hell's Angels and unilaterally report back to your license or to say this is what we're doing we're complying with the brand guidelines here's examples of our use to protect the arrangement that's in place so common directives and common ownership where there's two companies with unity of purpose is probably going to be enough but if you're in a dispute you'll probably have to show evidence of the unity of purpose argument sorry activity so if you haven't got if you've got different directors and different ownership then you're probably going to have a really difficult situation if you don't have a license agreement in place you'll need to show some evidence or the actual control so in relation to ownership and the second part of the section eight tests so ask yourself whether you have had an entity using the mark yet if you haven't got an entity using the mark yet then you would be claiming ownership probably on the basis of filing an application because it's not being used in the market yet if you have got use in the market you need to be really careful that the entity that's using it is the applicant for registration or those rights need to be assigned out of the entity using it and into the name of the party that wants to be the applicant before you file the application if you do if you file the application and assign later it won't work it'll be considered an invalid registration and incapable of being fixed so if if you haven't got use yet it's much easier to move things around so I'm just going to pause quickly to have a look at what questions have come in I can see one but no I could see one but it seems to have showing up my screens I'll try a different way okay so you so the question is coming from somebody who at university technology transfer office where most of the licenses are patents and once in a while they'll have a trademark license along with some registered marks and most of the the the concern is here that's been raised is that where you have a patent license it requires lots of further developmental work by the licensee which means that the license or the university can't really exercise quality control over the licensee so it's that that situation sounds like the mark might not yet be in use in the market so that that would be a situation where you probably if somebody was attacking you for non use you'd be asking for discretion to be exercised because you if you haven't got a product that's final and in the market then you wouldn't saying you'd be arguing discretion should be exercised because you you're preparatory steps and that you're showing preparatory steps to market and that normally would be enough if it's a situation where they're using it but they may be changing the product and so that mark might have gone out let's say sorry the product might have hit the market in version 1 and you've got the mark on it and then version 2 is going to be updated later I still think that's use one of the things that you could do is get when they when the licensee provides periodic updates to you about the work that it's conducting and they're reporting back even if it's under the patent space about the product and how it's being developed and they were pulling back to the license or that is the license or investigating and checking and controlling at least to some extent what what's being developed and if the intention is for the mark to ultimately be applied to that product then there's an argument that you're exercising quality control over the goods that the mark is being applied to and in the trade marks act exercising quality control is a basis for establishing authorized use the hope of answer that question there's a little bit of a long answer but let's wait another minute or two to see if there is any further questions you no doesn't seem to be anything further than so I just like to thank you all for persevering today with our webinar we will have some future webinars if we are not able to have our normal breakfast for lunch forums at the Griffith hacker office and this is one of our first ones so it's probably been a little bit bumpy but we appreciate you staying with us and I'm sure we will get better at doing them later on so thank you everybody for joining you