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



2
3 applied for registration. Here, a new
corporate entity, Capital, had applied
for a logo mark in circumstances
where Fine Foods was the registered
owner of and had been using the
same or a substantially identical
mark. Despite the consent to use the
registration and Capital’s intention
to authorise Fine Foods to use it, His
Honour found it was difficult to see
how Capital could ever be taken to
be the owner of the Capital Wicked
Sister (logo mark) such that the s.58
ground was made out. The same
conclusion was reached in relation
to the WICKED SISTER word mark.

Ultimately, the Capital Marks
were not cancelled. Markovic J
considered it was not appropriate
to exercise the discretion to cancel
the registrations due to the lack
of risk of confusion if the status
quo was maintained. His Honour
considered the ‘unity of purpose’
between the companies was a
relevant consideration in this regard.

Trident Seafoods Corporation v Trident Foods Pty Ltd [2018] FCA 1490
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (26 May 2017)
Even when the entities involved are
part of the same corporate group, it
is important to ensure applications
are filed in the correct name. Where
an application is filed in the wrong
name this cannot be remedied by way
of assignment or amendment. While
the issue of ownership may be raised
in an opposition, critically a trade
mark owner seeking to enforce its
rights against an infringer may find its
registration attacked for invalidity. A
portfolio review can consider whether
any registrations may be vulnerable to
rectification on the basis of ownership
and we recommend regularly seeking
a review and/or advice on this issue.

Inspire October 2020
respect to which the applicant seeks
to register the mark: see Anchorage
Capital Partners Pty Ltd v ACPA Pty
Ltd (2018) 259 FCR 514 (Anchorage
Capital) at [48].”
Markovic J found that at the filing
date Capital had intended to
authorise the use of the Capital
Wicked Sister (logo mark) by Fine
Foods as evidenced by the licence.

“But it could not be said that PDP
Capital was the author of that
mark. Clearly PDP Fine Foods
was its author.”
His Honour found that at the filing
date of the Fine Foods Mark, Fine
Foods claimed to be the owner of
that mark and used or intended to
use the mark in relation to the goods
claimed including the Common
Categories and thus was its owner.

Referring to the Trident 2 case,
Markovic J found that a similar
‘unity of purpose’ could be
inferred as between Fine Foods
and Capital given the common
CEO and sole director, and the
companies sharing the common
goal of maximising Wicked Sister
product sales and brand value.

However, this did not address the
question as to the identity of the
owner of a mark under s.58.

Markovic J distinguished this case
from Pham Global 3 , where Mr Pham
was found not to be the owner of the
mark because he had not used the
mark, had no right to use it and did not
intend to use it but had nonetheless
5 Anita Brown | Principal
BA LLB MIPLaw GAICD
anita.brown@pof.com.au