Neumann v Sons of the Desert SL

The matter of Neumann v Sons of the Desert SL [2011] FCAFC 100 arose as an appeal under the Trade Marks Act 1995 (Cth), challenging the decision of the Registrar of Trade Marks, who had dismissed the applicant’s opposition to the registration of a trade mark. The applicant, who had been a joint owner of the trade mark, argued that the registration should be refused as it would result in a breach of an agreement that the trade mark would be jointly owned. The case was heard by the Full Federal Court.

The central legal issue in the appeal was whether the applicant and Mr Galdeano were joint owners of the trade mark in question, and whether the applicant had standing to oppose the registration on that basis. The applicant argued that under sections 42 and 57 of the Act, exclusive use of the trade mark by Mr Galdeano would be contrary to law, as it would breach the agreement of joint ownership. The applicant also contended under section 58 of the Act that the applicant for the trade mark was not the true owner because, by agreement, the applicant and Mr Galdeano were joint owners.

The Full Federal Court found in favour of the applicant, holding that the Delegate had erred in excluding the oral and implied agreements as to the joint ownership of the trade mark. The Court held that the August 2002 agreements were not entire contracts governing the ownership of trade marks by the parties, and that there was evidence of an agreement to jointly own the trade mark in all jurisdictions. The Court set aside the Registrar’s decision, allowed the applicant’s opposition to the registration, and refused the registration of the trade mark application.

The final orders of the Court were that the appeal be allowed, the decision of the Registrar be set aside, the opposition to registration be allowed, the registration be refused, and the respondent pay the applicant’s costs of the appeal and of the proceedings before the Registrar of Trade Marks.