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UK Trade Mark Ownership. Jessica Harris Wiggin LLP. Discussion points. Entitlement to a UK trade mark Types of applicants Joint applicants /co-ownership How to deal with trade mark assignments Registered and unregistered rights Partial assignments and their wider implications
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UK Trade Mark Ownership Jessica Harris Wiggin LLP
Discussion points • Entitlement to a UK trade mark • Types of applicants • Joint applicants /co-ownership • How to deal with trade mark assignments • Registered and unregistered rights • Partial assignments and their wider implications • How ownership changes can be dealt with and recorded • Requirements for a deed and who can draft this type of document
Who can own a UK trade mark? A registered trade mark and an application for registration are both personal property (Sections 22 and 27 TMA 1994). This means that an applicant must have the necessary standing to hold property: • an individual (a natural person) • a legal person (a legal entity, whether human or non-human, capable of owning property in their own name). There are no nationality restrictions on who can apply for a UK trade mark (unless applied for via the Madrid System).
Types of applicants • Individuals – must include full name • Companies - a business incorporated into a legal entity (e.g. Ltd., Inc. and so on) • Partnerships – • Partnership Act 1890 - ‘Partnership is the relation which subsists between persons carrying on a business in common with a view of profit’ • includes limited liability partnerships, partnerships governed by an agreement (must state ‘a partnership’ after the name of the partnership in the application) and partnerships at will (must list the partners who make up the partnership in the application) • Trustees • Registered charities • Other unincorporated bodies - for example, trading names, do not have capacity to hold property in their own name.
Joint Applicants / Co- ownership • Section 23 TMA 1994 provides for joint applicants/co-ownership between two or more persons: • Each co-owner is entitled to an equal undivided share in the registered trade mark subject to any agreement to the contrary • Each co-owner can exploit the trade mark for their own benefit without the permission of the other co-owners (but if done separately and without care, the trade mark may be vulnerable to revocation for being misleading – s46(1)(d) TMA 1994) • One co-proprietor may not without the consent of the other or others, grant a licence to use the registered trade mark or assign his share in the registered trade mark. • A co-owner can commence infringement proceedings but may not proceed with the action unless the other, or each of the others, is either joined as co-claimants or co-defendants. • Possible, but in order to avoid complications, a co-ownership agreement setting out how the registration should be dealt with by the parties at the outset is sensible.
Assignments - registered rights • A trade mark assignment is a transfer of an owner’s rights, title and interest in a trade mark to another party. • An agreement to assign is not the same as an assignment (even if it is a signed contract). • An assignment must satisfy the formalities requirements in the Act, i.e. is not effective unless it is in writing and signed by the assignor (or by a personal representative on their behalf ) – s 24(3) TMA . • Consideration? If the assignment is a simple contract, not a deed, consideration is required to make it effective (usually monetary and can be nominal, e.g. £1) • An assignment is a ‘registrable transaction’ – s 25 TMA. Once executed, the assignment should be recorded at the UKIPO (Form TM16 – both parties to the assignment need to sign) to facilitate exploitation of the mark. • Until the assignment is registered, it will be ineffective against a person acquiring a ‘conflicting interest’ in the mark in ignorance of the assignment - s 25(3) TMA (although failure to register the assignment will not affect the validity of the transaction). • Under s 25(4)TMA, failure to register an assignment before the mark is infringed will affect a proprietor’s ability to recover its costs unless the application to register it has been made within six months of the assignment, or the court is satisfied that it was not practicable for such an application to be made.
Partial assignments • Partial assignments are provided for under s 24(2) TMA and allow for: • Some of the goods or services to be transferred to someone else; or • Use of the mark in a particular manner or locality by someone else. • Once split, each part becomes a registration in its own right. • It is not possible to split a series mark. • Same requirements as for full assignment of registered rights save that a Form TM16P is required in order to record a partial assignment at the UKIPO. Wider implications • A trade mark is a badge of origin. Partial assignments could mean a brand becomes diluted and associated by the public with more than one owner. Care needs to be taken that the mark does not become liable to mislead the public at the risk of revocation (s 46(1)(d) TMA). Could a licence be better?
Assignment – unregistered rights • s24(6) TMA provides that ‘nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trade mark as part of the goodwill of a business’. • Accordingly, there are no statutory instruments and the common law rule that a mark may only be assigned together with the goodwill of the business for which it had been used applies.
Requirements for execution of a deed of assignment • Must be in writing (a common law requirement) • Must be clear that it is intended to take effect as a deed (s1(2)(a) Law of Property (Miscellaneous Provisions) Act 1989) • Must be executed as a deed – the applicable execution formalities will differ according to the legal personality of the executing party. For example, under s44(2) Companies Act 2006, the standard formalities for executing a deed on behalf of a company are that it must be executed: (a) by two authorised signatories, or (b) by a director of the company in the presence of a witness who attests the signature • Paralegals beware! Preparing a deed of assignment isa reserved legal activity under the Legal Services Act 2007. IPREG and SRA regulated firms can undertake this reserved activity but paralegals may wish to avoid sending emails which state “I have drafted the attached deed...”.
