Who owns an unregistered trademark and can anybody actually even own an unregistered trademark? It depends on the country that you’re in, for Australia and New Zealand, an unregistered trademark can be owned.
It’s generally owned by the first person to use that trademark in that country and very little use is required. So it could even be advertising your new range of clothing in a magazine, which could be seen as enough to give you the right of ownership of that trademark. It doesn’t mean you can enforce it or stop others from using it, but it gives you enough rights so that you could get the trademark registered. Once it’s registered, you could enforce it and stop others from using it. But what about the situation where the trademark is never used in Australia or New Zealand and it’s only used overseas?
In that situation the same applies, in that the first user there generally owns it, except if there’s a relationship of trust. So for example, if you went to the US and you saw an incredible range of doughnuts called doughnut magic, and you were talking to them about maybe being a franchisee here in Australia then you decide they’re too expensive, i’ll just do it on my own. In that situation, if you then started using the name doughnut magic, and try to register it as a trademark, you would be doing it in bad faith. Because even though donut magic hasn’t used it here, You know that it’s their brand from overseas and you’ve tried to get some kind of benefit for yourself when you had discussed being the franchisee.
Now, if you went to the States and you sought donut magic and you thought it was wonderful, and you wanted to use the same name here, but you never approached them, you never had discussions about being a franchisee. Provided, they’ve never used or advertised the name in Australia, then you could theoretically get the trademark in Australia. Of course, the difficulty is that most businesses have websites these days.
This part of the law relies on an old 7 Up case in the days before the internet, when 7 Up hadn’t used 7 Up in Australia and somebody wanted to register 8 Up, which is very similar to 7 Up. They clearly were trying to trade off the reputation of 7 Up, in that case because 7 Up had never been used in Australia, the court said the Australian company could have the 8 Up trademark.
But these days, it would be very difficult to find a brand overseas that’s not on the internet and if it’s on the internet and you could have accessed it from Australia, there would be an argument as to whether or not such use was Australian use. This is something really arcane, like for example a tiny little jeweler shop that’s not on the internet. It’s best to come up with your own brand rather than copying somebody else’s, but what about the situation where you have an unregistered trademark that people are using?
If you have a collaboration with two or three people using the brand and nobody actually registers it, who owns the thing? Well, it’s likely that a court would consider you all joined owners of that brand, it’s always best just to get it in writing. A simple email to the people in your collaboration group saying, “I know we are all collaborating on this project just to let you know that this is my brand name, and I own the rights to it,” or “I’m happy for us all to own the rights to this brand name. But if we disband, I would like to keep using it.”
That way you confirm that you own it, or just simply get the trademark registered in your own name because that can prevent issues from happening in the future. My name is Cathryn Warburton and I am the Legal Lioness.