Whether as part of a joint venture or another collaboration, a registered trade mark may need to be held by more than one party. While this is possible, care must be taken to ensure that everyone understands what rights they have. If a clear agreement isn’t entered into at the outset, disputes can arise later on. These may be in relation to how the trade mark can be exploited or enforced, uncertainty as to liabilities for costs, and problems in the event that one of the joint owners dies or is liquidated.
Ideally, an agreement would be clearly set out in writing. This might take the form of a standalone document, or be part of a more general business agreement. The parties can agree any arrangement of ownership and division of rights and responsibilities that they wish.
This is generally done in the form of a contract, which should cover issues such as:
- which party is responsible for paying fees
- who decides on and pays for suing infringers and how the other party is to be indemnified against the costs of such an action
- how the parties should act together to ensure the right is not vulnerable to cancellation by others
- under what circumstances the mark can be exploited
- how any co-ownership can be terminated
- what happens in the event of the death of one of the owners, or an administrator, receiver or liquidator is appointed
If no particular arrangement is reached, UK law does provide a default position — that each applicant has an equal, undivided share in the trade mark registration as tenants in common. This means that:
- Each owner is entitled to use the rights without needing the consent of the other co-owners — so if the parties happen to fall out with one another, they will all still be able to continue using the rights without permission from the other parties.
- The registration may be vulnerable to cancellation — if a mark is being used in different ways by different parties, it may no longer serve to distinguish one party’s activities from those of others.
- None of the owners may grant a licence, assign or mortgage their share of the rights without the consent of the other parties.
- The share of an owner who dies will pass to their heirs, not to the other owners.
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