New practice for partnerships issued by Trademark Registry
The UK Trademark Registry has issued a notice setting out its new practice of allowing a partnership to be recorded as an applicant for, or proprietor of, a trademark. The registry's previous practice in such cases was only to record the partnership if it was a corporate body, or if some or all partners were listed.
This change in practice follows the decision of the High Court in Byford v Oliver ( FSR 39). In that case a group of musicians were held to constitute a 'partnership at will', and the name and goodwill of the band were assets of the partnership rather than the personal property of the individual members of the group. Accordingly, the registry has changed its practice so that if the band members had applied to register their band name as a trademark, the application could have been made in the name of the partnership.
The new practice as set out in the notice is as follows:
- Where the applicant or assignee is a partnership, this must be stated in the application, after the name of the partnership, for example, "Staples (a partnership)".
- Applicants will have to decide whether the names of the individual partners should be included in the application. But, as guidance, if there is no agreement covering the ownership of the partnership's intellectual property (IP) assets, then the names of the partners should be listed, for example, "Staples, a partnership of A, B and C". The reasoning behind this is that a change in the composition of the partnership (as partners leave or join) will mean that the IP rights of the original partnership may have to be assigned. Thus, to assist the registry's administration process (given that the name of the partnership may not change) this assignment of rights will be more straightforward if the names of the partners are also recorded.
- To ensure the validity of an application or assignment, applicants must ensure that the organization named as applicant or proprietor is capable of owning property. The registry does not generally intend to check the status of the applicant or assignee, and clarification will only be sought where the name of the applicant or assignee creates an obvious doubt as to whether it can hold property.
Emma Malcolm, Hammonds, London
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