Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768

Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768

Mediaquest failed to prove that the opportunity to register the Peel Away Mark in Australia came to Mr Brailsford by reason of his position with CRT or that CRT had any entitlement to the Registered Mark. Consequently, no such entitlement vested in CRT's trustee in bankruptcy and there was no assignment or transmission to Mediaquest. Because there was no actual assignment or transmission of the Registered Mark to Mediaquest, the Registrar's earlier recording of the assignment was affected by jurisdictional error, and the Registrar validly corrected the erroneous entry under s 81 of the Trade Marks Act 1995 (Cth).

Jurisdiction
Australia
Judgment Date
30 July 2012
Procedural Posture
Application Challenging a Decision of the Registrar of Trade Marks and Seeking Declarations and Rectification of the Register of Trade Marks / Final Judgment
Outcome
Application dismissed.
Legal Topics
['ownership of Registered Trade Mark' 'assignment and Transmission of Trade Marks' 'correction of Register of Trade Marks' 'jurisdictional Error' 'fiduciary Duties of Directors' 'constructive Trust']
['intellectual Property' 'trade Marks' 'administrative Law' 'equity'] ['ownership of Registered Trade Mark' 'assignment and Transmission of Trade Marks' 'correction of Register of Trade Marks' 'jurisdictional Error' 'fiduciary Duties of Directors' 'constructive Trust']

Case Brief

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Procedural Posture

Application Challenging a Decision of the Registrar of Trade Marks and Seeking Declarations and Rectification of the Register of Trade Marks / Final Judgment

Legal Issues

  1. 1 ["Whether Mediaquest Communications LLC was the beneficial owner of Australian trade mark registration number 741047 by reason of CRT's alleged equitable entitlement and subsequent bankruptcy assignment to Mediaquest." 'Whether Mr Brailsford acquired the Registered Mark on trust for Coating Removal Technology Limited because of his fiduciary position as a director or chief executive officer of that company.' 'Whether there was an actual assignment or transmission of the Registered Mark to Mediaquest for the purposes of ss 109 and 110 of the Trade Marks Act 1995 (Cth).' 'Whether the Registrar had power under s 81 of the Trade Marks Act 1995 (Cth) to cancel the recorded assignment to Mediaquest.']

Ratio Decidendi

Mediaquest failed to prove that the opportunity to register the Peel Away Mark in Australia came to Mr Brailsford by reason of his position with CRT or that CRT had any entitlement to the Registered Mark. Consequently, no such entitlement vested in CRT's trustee in bankruptcy and there was no assignment or transmission to Mediaquest. Because there was no actual assignment or transmission of the Registered Mark to Mediaquest, the Registrar's earlier recording of the assignment was affected by jurisdictional error, and the Registrar validly corrected the erroneous entry under s 81 of the Trade Marks Act 1995 (Cth).

Court Disposition

Application dismissed.

Orders

  • ['The application be dismissed.' "The applicant pay the respondents' costs."]