Trade mark
ownership a
wicked question
The case of PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd 1
is a reminder that a trade mark registration may be invalid
if the application was filed in the incorrect name.
Capital brought an action for
infringement of its WICKED SISTER
trade marks, which it used mainly
in relation to chilled dessert
products, against Grasshopper in
relation to its use of its WICKED
marks for dipping sauces. While
the trade mark infringement claim
ultimately failed and Grasshopper’s
cross claim for rectification was
not upheld, the case demonstrates
the importance of getting trade
mark ownership right at the time
of filing a trade mark application.
Even when the
entities involved are
part of the same
corporate group, it is
important to ensure
applications are filed
in the correct name.
Background Inspire October 2020
On 29 May 2008, PDP Fine
Foods Pty Ltd (Fine Foods) filed
for registration of the following
mark (Fine Foods Mark) in
classes 29 and 30:
4 On 9 February 2016, Capital filed
an application for registration for
the following mark as well as the
WICKED SISTER word mark (the
Capital Marks) also in classes 29
and 30 which covered a number
of goods claimed in the earlier
application (Common Categories):
1 Capital was a related entity of Fine
Foods incorporated to hold all the
IP of the Wicked Sister business as
part of an asset protection strategy
and to licence it to third parties.
Both companies had a common
CEO and sole director. Registration
of the Capital Marks had been
sought in Capital’s name to avoid
possible tax consequences, which
could flow from an assignment of
the Fine Foods Mark to Capital.
The Capital Marks were accepted
for registration following the filing
of a letter of consent by Fine
Foods permitting the ‘use and
restriction’ - which should have read
‘registration’ - of the Capital Marks.
A licence dated 11 February 2016
authorising Fine Foods as the entity
responsible for recipes, production,
promotion, and distribution of all
WICKED SISTER products to use the
Capital Marks was also executed.
PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078
Against this background Grasshopper
sought rectification of the Capital
Marks under s 88(2)(a) of the Trade
Marks Act 1995. This provides for
rectification on any of the grounds on
which a registration can be opposed.
Among the grounds that Grasshopper
relied on was s 58, which provides
that a registration may be opposed
on the ground that the applicant is
not the owner of the trade mark.
Grasshopper argued that Capital’s
Wicked Sister (logo mark) should
not have been accepted in respect
of the Common categories because
Fine Foods, not Capital, was the
owner. The question of ownership
of the Capital Wicked Sister (logo
mark) was assessed at the date of
application being 9 February 2016.
At that date, Fine Foods was the
registered owner of the Fine Foods
Mark. The two marks were said to be
the same or substantially identical.
In the decision, Markovic J spelt
out the requirements for ownership
of a trade mark under the Act:
“Section 27 of the TM Act permits
a person claiming to be the owner
of a mark to file an application
for its registration. Ownership is
determined either by reason of
authorship and prior use or by
reason of authorship, the filing of
the application and an intention to
use or to authorise use: see Pham
Global at [29]. Authorship refers to an
applicant’s adoption of a mark with
the intention of using it in Australia in
relation to the goods or services with