19A.6. Use by the trade mark owner, predecessor in title or an authorised user

Use of the trade mark must be by either the person claiming to be the owner, its predecessor in title or an authorised user.

6.1  Use by the trade mark owner

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 subsections 41(5) and 44(4).
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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 (subsection 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 (subsection 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 (paragraphs 8(3)(a) and 8(4)(a)).

Two types of control have been set out in subsections 8(3) and 8(4) but these in no way limit the meaning of the expression “under the control of” (subsection 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 (subsection 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.

There is no provision under the Act for recording authorised users of trade marks on the Register. This is in contrast to the provisions which existed under the Trade Marks Act 1955 for recording registered users. (See reference to powers of an authorised user of a trade mark under section 26 of the Act discussed in Section 8 of this Part.)