Karlsson v Griffith [2019] NSWSC 1335

A trade mark owner registered and – for a time – used a slogan.  

After it stopped using the slogan, another party sought the owner’s consent to register it as a trade mark, threatening deregistration for non-use if consent was not provided.  The owner consented.  

The other party became the new owner of the mark and the owner cancelled its own registration: [6].  

Following this – surprisingly – the new owner sued the former owner for trade mark infringement in relation to the slogan.  

A person does not infringe another’s trade mark if the person exercises a right granted by the Trade Marks Act i.e. the rights the former owner had while it was the owner: s122(1)(e) of the TMA.  

The Court found, with little difficulty, that the former owner was entitled to use the mark in the period in which it owned it: [20].  The document the new owner used to sue was struck out for being "embarrassing" in the legal sense.   

The Court made orders setting out a regime allowing the new owner to propose a new document.  In coming to its decision the Court noted the suggestion that expungement of a trade mark is not retrospective: [16].  

So, if you’re the owner of a trade mark, you’re allowed to do the things that owners do!