Law Assignment | Trademark Application
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Added on 2020-05-08
Law Assignment | Trademark Application
Added on 2020-05-08
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Case 7Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd1Background 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 shouldbe 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 3Allens, 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, s586Margaret 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 anddifference 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 1Whether the two marks were similar enough to breach any intellectual property laws?Answer 1In 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 2What is the process of making a trade mark application?Answer 2In 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 ofusing the trade mark with regards to the pertinent goods or services. Another stipulation is for theapplicant 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
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