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