What’s in a name? Who should own your trade mark..

The importance of ensuring that the correct owner of a trade mark is recorded at the Patents Office has been highlighted in a recent decision by the Controller of patents in Ireland.

Cumann Lúthchleas Gael (commonly referred to as the “GAA”) is recorded as the registered owner of the word mark “GAA” for goods such as clothing and sporting articles. The trade mark was registered at the patents office in 2007 as trade mark number 239459.

T-Rex clothing, a Mayo-based clothing company, sought invalidation of the trade mark on grounds including that the GAA, as an unincorporated association, was not entitled to own property, including intellectual property such as a trade mark.  The invalidation action was issued following alleged infringement of the trade mark by T-Rex clothing, which had prompted the GAA to issue a request to T-Rex to cease their use of the Mark.

In the invalidation action, T-Rex alleged that the trade mark should be found invalid i)  under Section 8(3)(a) of the Trade Marks Act because the registration of the mark in the name of an unincorporated association runs contrary to public policy that prohibits unincorporated associations from owning property; ii)  under Section 8(3)(b) of the Act because it is in breach of the provisions that a trade mark shall not be registered if “it is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services”; i.e. alleging that the registration of a trade mark in the name of an unincorporated association deceives the public into believing that GAA is legally entitled to be registered as the owner; and iii) under Section 30(1) of the Act which states that no notice of any trust (express, implied or constructive) shall be entered on the Register.

The Controller rejected the first two grounds on the basis that the “public policy” and “nature as to deceive the public” provisions apply solely to the trade mark itself, and not to any other aspects of its registration, such as its ownership.

With regards to the argument that the GAA, as an unincorporated association, was not entitled to own property, and therefore to own the trade mark, the Controller acknowledged that “it is a well-recognised principle of Irish law that unincorporated associations…cannot own property or enter into contracts in their own right”.  However, he questioned whether this was sufficient reason to invalidate a trade mark that had been registered since 2007. He found that while the application should have been applied for originally in the name of “The trustees for the time being of the GAA”, this was no more than an “administrative oversight”, which he considered should not condemn the owner to loss of the trade mark, or allow a third party to use the GAA mark with impunity. He rejected the argument that Section 30(1) of the Trade Marks Act means that trustees cannot be the legal owner of trade marks, instead finding it to mean that the legal owner must be recorded.   This was, he stated, giving an example, to prevent the use of such mechanisms as “Held in trust by Joe Soap, on behalf of Sean Soap”, because in that case Joe Soap would not be the legal owner. Summing up, the Hearing Officer urged the GAA to formally apply to rectify the ownership of the Mark on the Irish Trade Marks Register.

Unlike the UK Intellectual Property Office approach, where confirmation is typically requested where there is any doubt as to an applicant’s legal status, the Controller in Ireland has previously taken a good faith approach regarding proprietorship, and there are no checks carried out to establish the existence, identity or accuracy of the name entered on a trade mark application form.  As a result, the Irish Trade Marks Register currently includes a large number of marks recorded in the name of unincorporated entities.   Whilst this decision of the Controller in this case found the recordal of an incorrect proprietor to be an “administrative oversight”, which could be corrected, T-Rex Clothing has signalled their intention to appeal this decision to the High Court, so it remains to be seen whether the tacit acceptance of this situation will continue.

Given the potential for uncertainty we would advise you to file any new trade mark applications in the names of individuals or incorporated entities and consider updating details of any marks currently listed on the register in the name of an unincorporated entity.  If you’d like to know more please contact Eimear Sampson.