King for a day
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.
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”.
October 29th, 2008 at 12:32 am
Anakin has registered “BBQ KING” as their Trade mark, yet Gold King has not registered “BBQ King” as their Trade mark. Now that Judge Branson pointed out that Anakin was not the owner of the Trade Mark “BBQ KING” yet Gold King should be the owner.
I do not understand why the Judgement was in favour of Anakin even though they are not the owner of Trade mark.
I am also confused that why Anakin only took on Chatswood BBQ king? I found that there is also an Hurstville BBQ Kig and an Epping BBQ King in Sydney and a few others BBQ KING interstate, plus more than a million BBQ King worldwide.
Does this judgement mean in future Gold King can register BBQ KIng as their Trade mark and keep on taking other business bearing the name BBQ King to court?
I am also confused about the date Anakin registered BBQ KING as trade mark which was after the other BBQ King restaurant operating their business. Should these BBQ King operations be notified when Anakin put in their registration?