A number of recent Federal Court decisions have highlighted the importance of correctly identifying inventors and owners in the context of patent applications. Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1467 illustrates the importance of clearly identifying ownership in the context of Trade Mark rights.
The first applicant and registered trade mark owner, Anakin, was one of a number of companies which, along with certain individuals, had been involved in the operation of a Chinese restaurant under the name “B.B.Q. King” since the early 1980’s. As noted by Branson J “considerable informality has attended the business affairs of the companies associated with the BBQ King restaurant”, leading to uncertainty as to the actual owner of the BBQ King trade mark at the date the application for registration was filed.
Her Honour found that at the time of filing, the second applicant Gold Kings owned the goodwill in the trade mark as well as the right to conduct the BBQ King business. As the applicant was not the owner of the trade mark at the date of filing, the respondent’s cross-claim for rectification was made out. Having regard to the informal way in which the affairs of the applicants were handled, including failures to comply with the Corporations Act and to pay stamp duty on transfers of the business, Branson J refused to exercise discretion allowing the trade mark to remain on the register.
The applicants were however successful in their claim for passing off and breach of the Trade Practices Act, obtaining orders for damages in the amount of $20,000 and an injunction restraining the respondent from using the name “Chatswood BBQ King”.