What the SUPAW Trade Mark Opposition Reminds Us About Trade Mark Ownership in Australia

Background

Two pet-food businesses, one unusual word: SUPAW. In Australian Pet Organics Pty Limited and Todd Graham v Supaw Holding Pty Ltd [2026] ATMO 59, a delegate of the Registrar of Trade Marks considered who actually owned rights in the word SUPAW when it came time to register it as a trade mark in Australia for baked pet treats and bakery services.

Supaw Holding Pty Ltd (the “Applicant’) applied to register the word mark SUPAW (the “Trade Mark”) in classes 31 (pet food) and 43 (food preparation and provision services). Australian Pet Organics Pty Limited and its founder, Todd Graham (collectively ‘the Opponent’), opposed the application under sections 42(b), 44, 58 and 60 of the Trade Marks Act 1995 (Cth) (‘the Act’).

This case turned on the fundamental question of whether the Applicant was the true and rightful owner of the Trade Mark pursuant to section 58 of the Act. Being an office decision, there is no new case law on this issue, but it nevertheless provides a useful reminder of the approach under Australian law to assessing trade mark ownership.

The Opponent claimed use of the Trade Mark from April 2021 broadly in relation to organic pet supplements, pet treats etc. The Opponent is the owner of a trade mark registration for the mark SUPAW having a priority date of 19 November 2020 in classes 3 and 5 broadly for animal care products and supplements. Accordingly, it was the Opponent’s contention that the Applicant is not the true owner of the Trade Mark.

The opposed Trade Mark was adopted in October 2015 for the applied-for Goods & Services by the Applicant’s predecessor in business Yu Meg Cai (‘Cai’). The Applicant purchased Cai’s business and claimed it included the Trade Mark. Saliently, the recorded purchaser of Cai’s business is Supaw Pet Bakery Operations Pty Ltd (‘SPBO’) and not the Applicant. SPBO is a related but separate entity to the Applicant. The purchase Agreement included the goodwill of the business and all intellectual property of the business which was defined to include business names and trade marks inclusive of unregistered trade marks.

The Section 58 Ownership Dispute

Section 58 allows a trade mark application to be opposed on the ground that the applicant is not the true owner of the mark. The delegate at paragraph 28 of the decision stated succinctly the Australian position regarding ownership (citations omitted):

“The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration and this requirement must be satisfied at the filing date of an application. Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing an application and an intention to use’. Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.”

Ownership of an applied-for mark may be challenged by another party that has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.

It is established law that use must use as a trade mark in the form of a ‘badge of origin’ to indicate a trade connection between goods and services and the trade mark owner, and the prior use must be in the course of trade in Australia.

It is the opponent that bears the onus to establish that the applicant is not the owner of the subject mark in an opposition. The delegate set out three requirements which must be satisfied to upend the default position that the Applicant is the prima facie owner of the owner of the trade mark as follows (paragraph 31; citations omitted):

• “the trade mark(s) relied upon by the Opponent is at least substantially identical to the Trade Mark (‘First Requirement’);
• the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent have been used (‘Second Requirement’); and
• a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any actual use of the Trade Mark (‘Third Requirement’).”

In the present decision, the delegate first had to determine exactly what had been used, and by whom – in particular, the delegate had to identify which of Cai’s historical marks counted as use of SUPAW itself to assess the First Requirement. The evidence showed Cai had traded under several marks over the years, including SUPAW PET BAKERY, SUPAWPET, and a couple of logo and signage marks. Applying the established “side by side” test for substantial identity, the delegate found that SUPAW PET BAKERY was substantially identical to the applied-for SUPAW mark — the added words “pet bakery” were purely descriptive and did not alter the mark’s essential character — whereas SUPAWPET and the logo marks were found sufficiently different to fall outside the ownership challenge. The delegate was also required to assess whether the applicant’s goods and services (all confined to baked pet food and related preparation services) were the “same kind of thing” as what had actually been sold under the earlier marks. Most were; a narrower slice relating to the provision of “drink” was not, since the historical use was all about food.

It is worth repeating that the Applicant claimed that SUPAW was first used in 2015 by Cai as a sole trader trading as Supaw Pet Bakery. In 2023, Cai’s business — including its goodwill and IP — was sold under a sale of business agreement. The buyer was not Supaw Holding Pty Ltd, the trade mark applicant. The buyer was a related but separate entity, Supaw Pet Bakery Operations Pty Ltd.

The Applicant argued that it did not matter that SPBO (and not the Applicant) was named on the purchase agreement on the basis that holding companies that own IP while a related operating company runs the business are a common structure, and the corporate group’s combined decade of use of SUPAW should be enough to found ownership, regardless of which group entity held the paperwork.

Unsurprisingly, the delegate rejected that argument since it is completely antagonistic to Australian jurisprudence on trade mark ownership. While acknowledging that dual company structures are entirely ordinary in business, the decision drew a clear line between commercial convenience and legal entitlement: the Act requires the applicant to be the owner of the mark at the time it files. Whilst dual company structures are common, ownership under the Act attaches to the applicant, not to its corporate group. A related company holding the earlier rights through common control is not the same as the applicant holding these rights. Even a demonstrated “unity of purpose” between the companies did not change the result: Cai’s original use, followed by the 2023 sale to the operating company, gave SPBO — not the holding company that filed the application — the earlier and better claim to SUPAW.

Why It Matters

This decision is a useful reminder that trade mark ownership is not simply a matter of “the trade mark/brand has been used for years, so someone in our corporate group must own it.” As a matter of law, ownership resides with the filing entity, not the group. A parent or holding company cannot rely on use by a related operating company, however closely controlled, to establish that the filing entity owns the mark. Failure to file the application in the name of the true and rightful owner of the trade mark cannot be remedied after the application is filed. In the present case, Supaw Holding could not point to its own use, or its own authorship of the mark, in order to claim ownership and as such, the opposition succeeded on section 58 and the application was refused.