Section 30 held to be inapplicable in ownership disputes

In proceedings involving rival trademark applications under Section 29 of the Trademarks Ordinance, the IP adjudicator has held that Section 30, which regulates honest concurrent use, was inapplicable in an ownership dispute (February 2 2009).

Two partners in a business (a pub known as 'Lemon') filed rival applications for the registration of the marks LEMON and THANK GOD IT'S FRIDAY under Section 29 of the ordinance (Applications 174888 and 176225 on the one hand, and Applications 180087, 180088, 180089 and 180090 on the other). One of the partners had withdrawn from the management of the business (apparently following a dispute), while the other continued to operate the business. 

 

The IP adjudicator held that Section 30 of the ordinance, which allows honest concurrent use in certain circumstances, was inapplicable in an ownership dispute. The adjudicator further stated that Section 29 proceedings cannot be used to obtain the dissolution of joint ownership, as such proceedings are designed to determine the rights of each applicant.

 

The adjudicator concluded that both applicants had rights in the marks, but refused to determine the ownership percentage of each applicant, noting that such determination would be irrelevant in Section 29 proceedings.  

 

Having examined the extent and nature of use of the mark, as well as the priority date of each application, the IP adjudicator found that the rights of the partner who continued to operate the business prevailed over the rights of the other partner. The IP adjudicator awarded costs in the amount of IS45,000 (approximately €8,000).     

 

The adjudicator left the door open for the losing party to bring opposition proceedings on the grounds of ownership of the marks under Section 24(a1)(2) of the ordinance.