10.1. Formality requirements - Name

Under section 6 of the Act “person includes a body of persons, whether incorporated or not.” However, subsection 27(2)(c) states that the application must be made by a person or persons having legal personality. Therefore an applicant for registration of a trade mark under section 27 may be an individual, a company, an incorporated club or association, an incorporated entity or any combination of these who together own a trade mark.  Applications lodged in the name of trusts, business names, trading styles, unincorporated associations, clubs, partnerships or societies will not be allowed since these entities do not have a legal personality.

Applications for collective trade marks however will continue to be capable of being owned by an unincorporated association.

The circumstances under which two or more persons may apply for registration of a trade mark are set out in section 28 of the Act.  Paragraph 28(a) of the Act covers the circumstances where the trade mark is used at all times on behalf of all the applicants Paragraph 28(b) provides for a joint trade connection between two or more applicants and the goods and/or services in relation to, or upon which, the trade mark is to be used. This encompasses joint ventures between companies or individuals who may not be trading together but who each has a role in putting the goods and/or services which carry the trade mark into the marketplace.

1.1  In an application for a trade mark the applicant must be identified correctly

A trade mark is a valuable property right and it is important that the owner is properly recorded. Therefore the identity of the person applying for registration of a trade mark must be clearly established as failure to properly identify the owner of the trade mark may cause difficulties in future actions concerning the trade mark. The examiner will take the information provided on name and address at face value and will not normally question ownership details except where it is obvious that the applicant does not have a legal personality. (See Annex A2 for a summary of matters dealing with the name and identity of applicants.)

If the application has been applied for in a name that clearly does not have legal personality (e.g. a business name) it may be possible for the owner to request an amendment (rather than an assignment) to replace the name with one that does have legal personality (e.g. the name of the owner behind the business name).

Care should be taken when considering requests for amendment to an applicant’s name as in some cases the amendment will not be allowable on the basis that there is no appropriate link or relationship between the name appearing on the application without legal personality and the proposed new name with legal personality.

Queries of this nature should only be raised where it is clear that the name appearing on the application cannot have legal personality.

Any change that would appear to be substituting one owner for a different owner cannot proceed as a change of name and would need to be considered under the assignment provisions.

1.1.1 Individual -

The full name of the applicant is required. A family name and a given name will be sufficient but a family name with only an initial will not. A business name or trading style is not acceptable as the name of an individual since neither of these entities have a legal personality. If a trading style or business name is included on the application in addition to the name of an applicant with legal personality (e.g. Joe Dover t/a Joe's Plumbing), those details will be entered on to the register, however it will have no bearing on the ownership of the trade mark right. The owner of the trade mark right ultimately is the legal entity in question, not the trading style or business name.

1.1.2 Joint owners -

The full name of each of the joint owners, whether they are individuals or companies, is required.

The full names of each joint owner should be captured separately

For example:

Stephen J Edwards

18 Victoria St

VICTOR HARBOR SA 5211

AUSTRALIA

AND

Pauline K Edwards

18 Victoria St

VICTOR HARBOR SA 5211

AUSTRALIA

Joint owners should not be captured as one single applicant on one line, for example: Stephen J Edwards and Pauline K Edwards. Where this has occurred, examiners should notify Trade Marks Admin and have the details captured correctly.

In cases where an ABN has been provided with joint owners, a search on the ABN should be conducted to establish the type of entity the ABN refers to and determine if the ownership needs to be clarified.

Example 1:

S.J Edwards and P.K Edwards

ABN 90428019306

The ABN search reveals the entity type to be a Family Partnership

This should be queried to obtain the full names instead of the initials. When this information is provided, it is acceptable for the details to be amended and captured to reflect joint ownership because it is the individual partners who own the trade mark. For further information on joint ownership in the form of a partnership, see 1.1.3 below.

It is important, when conducting a search of the ABN, to give due care to the format of the name and entity type associated with the ABN, as this will guide the clarification needed.

Example 2:

Sarah.Edwards and Peter.Edwards

ABN 90428019306

A search of the ABN reveals the entity name to be SARAH EDWARDS AND PETER EDWARDS GROUP and the Entity Type to be OTHER UNINCORPORATED ENTITY.

This should also be queried as the ownership is unclear. Clarification should be sought as to whether the ownership is to be held jointly by the individuals or by the entity.

If the intended ownership is to be in the name of the entity, clarification on whether the entity has legal personality is required as a trading style or business name is not acceptable.

1.1.3 Partnerships -

In the majority of cases, an application should not be accepted where one or more owners of the trade mark are an Australian partnership.  This is because Australian partnerships (including Australian limited liability partnerships) do not have legal personality; the liability lies with the partners rather than the partnership.  In the case of partnerships, each partner (or a head partner(s) with the agreement of the other partners to act on their behalf) will need to be listed as joint owners.  An Australian partnership may be listed as an owner on a collective application.  However, when examining applications from overseas applicants, it should be remembered that some overseas jurisdictions have partnerships with legal personality, such as the Limited Liability Partnerships (LLP) in the USA.

1.1.4 Incorporated Associations -

Associations may be incorporated under State laws and may also be registered under Commonwealth legislation. If the association is registered under Commonwealth legislation it will have an Australian Registered Body Number (ARBN).

1.1.5 Companies -

The full name under which a company is incorporated is required. The company will be uniquely identified if the Australian Company Number (ACN) or Australian Business Number (ABN) is given. If an ABN or ACN has not been provided and the name does not have Limited or Proprietary Limited, the ownership details should be queried (see 2.2). Overseas companies should also provide the appropriate company type abbreviations for the country in which they are based (eg AG for Germany, S.r.L for Italy and so on).  It also assists in complete identification of overseas companies if the place of incorporation is provided, although this information is not compulsory.  Annex A1 contains a list of abbreviations of types of companies which are recognised as bodies corporate.

1.1.6 Government Departments -

where the applicant is a government department, the traditional form of the name of the applicant is "The Crown in Right of the Commonwealth/State of X (followed by the name of the department or c/- the name of the department)".  While this form is acceptable and conventional, there is some leeway.  It is acceptable for an applicant to describe itself as "The State of X" and an applicant may find it convenient to add some reference such as "c/ the Department of Y".  Beyond this, various government agencies have been established by legislation that creates a new legal identity.  

Examiners should give due credence to the name given by any State or Federal body.  However, the form "X Government Department of Y", while familiar, is likely to be outmoded by regular structural changes within the government in question and may not accurately reflect true ownership.  If there are other matters to be raised it may be helpful to ask such an applicant if it would prefer to be described as "the State of X (with or without a following reference to the name of the department, such as "acting through the Department of Y)".   The ultimate owner of the trade mark is the government in question, not a department of that government.  

1.1.7 Quasi-Governmental instrumentalities -

Reference should be made to the authority (usually legislative) under which the instrumentality functions. The application can be made in the name of the instrumentality and executed in the manner prescribed by the rules regulating the body. A description, for example, along the following lines would be adequate:

LUNA PARK RESERVE, a New South Wales Corporation existing under subsection 9(2) Crown Land Act 1989.

It should be noted that this information, apart from the name, will not be entered on the database.

1.1.8 Government Authorities and Commissions -

Reference should generally be made to the Commonwealth or State/Territory government that is responsible for the authority or commission, in a similar format to government departments.  Where the owner is one of these entities and they have supplied an ABN which is linked to a government entity type, the name of the entity (without the ‘State of X c/o…’ format) will be acceptable.

1.1.9 Trusts -

Where the name of an applicant appears to be the name of a trust, this should be queried. The trust’s name as applicant should be replaced by the name(s) of the trustee(s). A trust imposes a personal equitable obligation on the trustee to deal with the property for the benefit of the beneficiaries or for the advancement of certain purposes (e.g. a charity). Because a trust is a relationship, it is a legal and factual impossibility for a trust to be an applicant or registered owner of a trade mark. It is the trustee who should be specified as the applicant, with the ownership details also likely to reference the trust that the applicant is the trustee of. The trustee will be bound by its common law and equitable duties, as well as the terms of the trust deed, to deal with the property of the trust (including any trade marks) appropriately. Please note however, continuing to reference the trust detail as part of the owner name is not compulsory as any amendment to applicant details is only limited to satisfying the requirement of legal personality.

1.2. Strata Corporations / Strata Companies / Owners Corporations / Body Corporate and Community Title Schemes

These are corporate entities which are conferred legal personality through statutory effect. As part of the requirements for incorporating, these entities will have prescribed corporate names and conditions. However, these can vary depending on the legislation applicable to each state and territory. If you encounter applications made by such entities, you may need to check the particular state or territory legislation to confirm that the applicant has been granted legal personality. If in doubt the applicant name should be queried and the applicant given the option to provide supplementary evidence (in addition to the application) which confirms the particular entity being incorporated in accordance with the relevant state or territories legislative requirements. In such cases, consult with your team leader in the first instance.