Care must be taken in determining whether the person claiming to be the owner is in fact the person who has used the trade mark. Evidence may demonstrate that it is another party that has used the trade mark (although this may constitute authorised use and still be considered use by the person claiming to be the owner – see 6.3 below).

6.2 Use by a predecessor in title

Trade marks are often assigned or transmitted from one person to another. This may be because of the sale of a business, a reorganisation of a corporate group or because a trade mark owner dies and their property passes to their beneficiaries.

Use by the predecessor in title will generally be taken to be use by the person who claims to be the owner. This is specifically provided for in ss 41(5) and 44(4).

Note that an unregistered trade mark used by a business cannot be assigned separately to the underlying goodwill of that business (Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65). As such, any person wishing to rely on prior use of an unregistered trade mark by a predecessor in title must demonstrate they are the assignee of goodwill in the relevant business.

However, note that both registered trade marks and trade marks the subject of a pending application can be assigned without the goodwill of the underlying business (s 106).

6.3 Authorised use

Often trade mark owners do not intend to use the trade mark themselves. Instead, they will authorise (license) another party to use the trade mark. This arrangement is common in corporate groups where the intellectual property is owned by a parent company or a nominated subsidiary, and the trading activities are carried on by another related entity.

Authorised use of a trade mark is taken, for the purposes of the Act, to be use of the trade mark by the owner of the trade mark (s 7(3)).

To be an authorised user the person who uses the trade mark must use the trade mark under the control of the owner of the trade mark (s 8(1)). The user must deal with or provide, in the course of trade, goods or services in relation to which the trade mark is used (paras 8(3)(a) and 8(4)(a)).

Two types of control have been set out in ss 8(3) and 8(4) but these in no way limit the meaning of the expression ‘under the control of’ (s 8(5)). The two types of control expressly set out in the Act are:

where an owner of a trade mark exercises quality control over goods or services (s 8(3)); and
where the owner of the trade mark exercises financial control over the other person's trading activities in relation to the subject goods or services.

In the context of a corporate group, control may be demonstrated where two entities act with a sufficient unity of purpose - Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (‘Trident’). In Trident, the Full Court held that a subsidiary company that was the registered owner of a trade mark had authorised use by its parent company on the basis that both entities had the same directors, same address, and one common purpose which was to maximise sales and enhance the value of the brand. This unity of purpose was indicative of actual control over the use of the trade mark by the registered owner.

Note that examination is not the appropriate time for the sort of detailed investigation into the issue of control that might occur in opposition matters. Provided that an applicant provides sufficient declaratory information addressing the issue of control, this will generally be taken at face value and the examiner should not routinely request further information or documents such as copies of licence agreements.