Practice Amendment Notice

PAN 2/04 - Trade marks owned by partnerships.

Background

It has long been Registry practice only to record partnerships as applicants or proprietors of trade marks if the partnership is a corporate body, or if some or all partners are listed. In a recent High Court case SAXON TRADE MARK [2003] FSR 39, Mr Justice Laddie held that a group of musicians constituted a 'partnership at will' and that the name and goodwill were assets of the partnership rather than the personal property of the individual members of the group. It would seem to follow that an application to register the trade mark SAXON could have been made in the name of the partnership which owned the common law rights under that name. We have reviewed our practice in the light of this case.

New practice

In future we will allow partnerships (including 'partnerships at will') to be recorded as applicants for, or proprietors of, trade marks. If the applicant or assignee is a partnership, we will require that this be stated in the application, after the name of the partnership, for example, 'Boggles (a partnership)'.

It will be for applicants and their advisors to decide whether the names of the individual partners should also be included in the application. Where there is no agreement covering the ownership of the partnership's intellectual property assets, a change in the composition of the partnership may mean that the intellectual property rights of the original partnership may have to be assigned. Given that the name of the partnership may not change, such an assignment may be more straightforward if the composition of the partnerships is also recorded. Accordingly, where there is no relevant agreement it is advisable to include the names of the partners in any application to register or take assignment of a registered trade mark. Where they are included, the names of the partners should be listed immediately after that of the partnership, for example, 'Boggles, a partnership of John Doe, Tom Cobley and Mickey Finn'.

It is the responsibility of applicants and their legal advisors to ensure that an organisation named as applicant or proprietor in an application or assignment is capable of owning property and is recorded in an appropriate manner. Otherwise there is a risk that the application or assignment may not be valid. We do not intend to, as a matter of course, look behind applications to check the status of the applicant or assignee. We will ask for clarification where the name of the applicant or assignee creates an obvious doubt as to whether it can hold property. However, if the person filing the document confirms that the applicant or assignee has the necessary standing and is accurately described, this will usually be accepted.

Please address any queries about this notice to:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom