A recent decision of the Irish Patents Office has highlighted the importance of ensuring that the correct proprietor of the trade mark is named on the Register.
In Savanagh Securities Limited t/a T-Rex Clothing (the "Applicant) v Cumann Lúthchleas Gael (the "Proprietor") the Applicant sought to invalidate the GAA word mark (the "Registration") on the basis that the proprietor lacked the legal entitlement to own property, as it is an unincorporated association.
The Applicant (who was alleged to be infringing the Registration) relied, inter alia, on the following legislative provisions to try and invalidate the Registration:
- The Registration is in breach of Section 8 (3) (a) of the Trade Marks Act 1996 (the "Act") as it was contrary to public policy because unincorporated bodies cannot own personal property;
- The Registration is in breach of Section 8 (3) (b) of the Act as 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" –the Registration in the name of an unincorporated association deceives the public into believing that the Proprietor is legally entitled to be registered as the proprietor of the Registration when it is not;
- Section 30 (1) of the Act provides that no notice of any trust (express, implied or constructive) should be entered on the Register. Accordingly he noted whilst it is customary for trustees to hold property for the benefit of an unincorporated association, neither the Proprietor nor its trustees could be listed as the proprietor of the Registration.
The Hearing Officer held that the provisions of Section 8 of the Act had no application as they are concerned with the content of the mark itself.
Cannot own property
The Hearing Officer agreed that it was well established law that an unincorporated body could not own property (such a trade mark) and therefore there was an administrative error in the name of the proprietor of the Registration.
He said that this did not justify invalidating the Registration. He noted that there was no provision in the Act or the Trade Marks Rules 1996 to refuse an application or to invalidate a registration on the grounds of the lack of a legal entitlement to own property. He said this error in the name of the proprietor could be corrected.
With respect to Section 30 of the Act, the Hearing Officer said that the purpose of this provision had been misconstrued by the applicant. He said that the purpose of Section 30 was to ensure that only the legal owner of the trade mark may be recorded as the proprietor on the Register. Section 30 does not mean that trustees cannot be legal owners.
The intention of Section 30 was to avoid, for instance, entries such as "Held in trust by Joe Soap, on behalf of Sean Soap" because in this example Joe Soap is not the legal owner of the trade mark.
The Hearing Officer noted that the name of the proprietor of the Registration should be changed on the register to the following "the Trustees for the time being of the GAA".
All practitioners and brands owners should be mindful of this when filing trade marks for unincorporated bodies. A cursory view on the relevant Registers would appear to indicate that it is a common occurrence.