Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd: A Case Study

This case study analyzes the legal dispute between Pham Global Pty Ltd and Insight Clinical Imaging Pty Ltd, focusing on trademark law in Australia. The case revolves around the use of similar marks in the radiology services sector and the application of the Trade Marks Act 1995 (Cth). Insight Clinical challenged Pham Global's application for trademark registration, alleging misleading conduct and infringement. The Federal Court initially dismissed Pham Global's appeal, a decision upheld by the Full Federal Court on additional grounds related to ownership. The core issue was whether Pham Global owned the trademark at the time of application, which the court determined was crucial. The case explores the process of making a trademark application, the importance of ownership, and the limitations of correcting defects through assignment. Key learnings emphasize the need for applicants to be the true owners of a trademark at the time of application, highlighting that defects cannot be rectified post-filing. The analysis includes relevant case law and legislation, providing a comprehensive understanding of the legal principles involved.

Case 7
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd1
Background
In this case, the disputing parties had been in a business where the provided radiology services.
In 2008, Insight Clinical, which was operating out of Western Australia, initiated trading under
its mark. Pham Global, which had been earlier known as Insight Radiology started trading in
New South Wales in 2012 by using a particular mark. Both these marks have been shown
below2.
(Source: Ashurst, 2017)
Insight Clinical made a claim against the application of Pham Global for registering the mark in
a successful manner, before the Registrar of Trade Marks. The appeal of Pham Global was
dismissed by the Federal Court’s single judge. This was done on the basis that the use of the
mark by Pham Global contravened the mark of Insight Clinical and was deemed as a misleading
1 [2017] FCAFC 83 (26 May 2017)
2 Ashurst, Federal Court clarifies requirements for substantial identity and timing of ownership (21 June 2017)
<https://www.ashurst.com/en/news-and-insights/insights/federal-court-clarifies-requirements-for-substantial-
identity-and-timing-of-ownership/>

or deceptive conduct based on the Australian Consumer Law. To this decision of the Federal
Court, an appeal was made by Pham Global in the Full Federal Court3.
Pham Global was given the leave for appealing; though, the grounds of this appeal were
quashed. The Full Federal Court also gave their decision in the favour of Insight Clinical on the
basis of additional grounds. The decision was focused on the question of ownership. The device
mark of the Insight Radiology had been applied in the name of Mr. Pham, who was its owner.
Though, at first instance, it was found by the judges that Pham had never been the owner of the
mark and did not have the intent of using the mark for the radiological services. Instead, the
mark was owned by Insight Radiology, which owned and used the mark.
It was argued by Insight Clinical that the grounds of opposition were given under section 58 of
the Trade Marks Act, 19954, where the registration can be opposed on different grounds that the
applicant had not been the owner of the particular mark5. And so, it was claimed that they should
be successful as the applicant, i.e., Pham, did not own the mark. Though, this argument was
dismissed by the judges and was concluded that the need of the applicant to own the mark could
be satisfied at any time, during the currency of application. Further, since the mark was assigned
by Pham to Insight radiology, the requirement was deemed to have been fulfilled. Though, the
Full Court overturned this decision and stated that the ownership of applicant had to be satisfied
at the time of application and not at any time after application6.
The Full Court also held that the device mark of Insight Radiology had been majorly identical to
Insight Clinical Imaging device mark. And it was stated by the judges that the process of
3 Allens, Patents & Trade Marks (28 August 2017) <https://www.allens.com.au/pubs/pta/fopta28aug17.htm>
4 Trade Marks Act, 1995 (Cth)
5 Trade Marks Act 1995, s58
6 Margaret Ryan, Assignment cannot cure defect in trade mark application (10 July 2017)
<https://www.pof.com.au/assignment-cannot-cure-defect-trade-mark-application/>

evaluation while assessing the major identity miscarried as the judge did not refer to the crucial
components of the marks, and even failed in assessing the relative significance of similarities and
difference with regards to these elements. The essential elements of both these marks covered a
circular device and the word insight. And so, there was held to be a resemblance between the
marks and that there were slight differences in the essential elements. As a result of this, based
on section 58 of this act, the conditions were satisfied and neither of the two, i.e., Pham nor
Insight Clinical, owned the Insight Radiology device mark.
Question 1
Whether the two marks were similar enough to breach any intellectual property laws?
Answer 1
In this case, the two marks are being questioned upon, which would attract the trademark related
intellectual property laws. In this regard, the Trade Marks Act, 1995 (Cth) would be applicable.
Question 2
What is the process of making a trade mark application?
Answer 2
In order to file a trade mark application in Australia, there is a need for the applicant to be the
owner of the trademark and is also required to fulfil one of the criteria laid down under section
27(1) of this act. As per this section, the applicant needs to be using or needs to have the intent of
using the trade mark with regards to the pertinent goods or services. Another stipulation is for the
applicant to be authorised or having the intention of authorising some other person for using this
mark with regards to the pertinent goods or services. Or the last option is that the applicant had
to have the intent of assigning the trade mark to an about to be formed body corporate, where

this body corporate would be using the trade mark with regards to the pertinent goods or
services7.
Question 3
Did the applicant have the ownership of the trademark in this case?
Answer 3
In this regard, reference has to be made to the cases of Mobileworld Communications Pty Ltd v Q
& Q Global Enterprise8, Crazy Ron's Communications Pty Ltd v Mobileworld Communications
Pty Limited9 and Global Brand Marketing Inc. v YD Pty Ltd10. The ownership was deemed to not
be held by the applicant in this case as the same was deemed as an afterthought of registration
process11.
Question 4
Can a defence be cited by the applicant that the trade mark did not resemble enough to be
allowed to make changes afterwards through assignment?
Answer 4
The quoted case is a leading reason why the assignment cannot treat the defect in the trade mark
application.
Question 5
What is the key learning of this case? What should be taken care of by the trade mark applicants?
7 Trade Marks Act 1995, s27(1)
8 [2003] FCA 1404
9 [2004] FCAFC 196
10 [2010] FCAFC 58
11 Eagar & Martin, An Insight into Trade Mark Ownership in Australia (26 June 2017)
<https://www.emiplaw.com/single-post/2017/06/26/An-Insight-into-Trade-Mark-Ownership-in-Australia>

Answer 5
There is a need to ensure that the where the applicant is not the real owner of the particular trade
mark, or cannot claim the ownership of such trade mark, particularly when the application has
been filed, this defect cannot be corrected later on, upon post-filling. And so, there was a need
for the decision to be taken before the registration process and not as an afterthought.

Bibliography
Cases
Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Limited [2004]
FCAFC 196
Global Brand Marketing Inc. v YD Pty Ltd [2010] FCAFC 58
Mobileworld Communications Pty Ltd v Q & Q Global Enterprise [2003] FCA 1404
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (26 May 2017)
Legislations
Contract Law
Tort Law- Negligence
Trade Marks Act, 1995 (Cth)
Others
Allens, Patents & Trade Marks (28 August 2017)
<https://www.allens.com.au/pubs/pta/fopta28aug17.htm>
Ashurst, Federal Court clarifies requirements for substantial identity and timing of ownership
(21 June 2017) <https://www.ashurst.com/en/news-and-insights/insights/federal-court-clarifies-
requirements-for-substantial-identity-and-timing-of-ownership/>

Eagar & Martin, An Insight into Trade Mark Ownership in Australia (26 June 2017)
<https://www.emiplaw.com/single-post/2017/06/26/An-Insight-into-Trade-Mark-Ownership-in-
Australia>
Ryan M, Assignment cannot cure defect in trade mark application (10 July 2017)
<https://www.pof.com.au/assignment-cannot-cure-defect-trade-mark-application/>