Trade Mark Law and Sharing Names

Trade Mark Law and Sharing Names

Exploring Use of the Same Mark by Multiple Undertakings

Edited by IIanah Simon Fhima

There are a number of points throughout the trade mark system where multiple undertakings share the same name, either unwillingly, or by consent. In this timely book, expert contributors address this controversial issue and identify the various points at which names are shared. This unique book uses both historical and interdisciplinary perspectives, as well as more traditional legal methodology, to examine the practical and theoretical implications of such name sharing for the parties involved. It analyses what can be learned from the sharing process about the nature of the trade mark system and the interests which it protects. General themes relating to the nature and purpose of trade mark law are also discussed.

Chapter 5: The Approach of the UK-IPO to Co-ownership of Registered Trade Marks: Nanny Leaves the Registry, but not Completely

Edward Smith

Subjects: law - academic, intellectual property law


5. The approach of the UK-IPO to coownership of registered trade marks: nanny leaves the Registry, but not completely Edward Smith* 1. INTRODUCTION It is perhaps an exaggeration to say that ‘nanny’ left the United Kingdom Intellectual Property Office (UK-IPO) in 1994 but there is nevertheless some truth in the statement. Of course, ‘nanny’ is not so much a person as an approach or underpinning assumption to the law governing the registration of trade marks. The ‘nannying’ approach, more precisely, the approach which regards consumer protection as paramount or at least a crucial Registry consideration, is in some respects still in evidence at the Registry and in its practices. In the main, however, traders who are already involved in, or anticipate co-proprietorship, coexistence or some other form of ‘sharing’ marks will find that the UK-IPO is accommodating in its practices and generally untroubled by private agreements of this nature. ‘Nannying’ reveals itself in different guises, and as suggested above, our concern here is the tension between (i) what has been called a ‘permissive’1 regime in terms of its approach to trade marks as items of property and coproprietorship, and (ii) the underlying function of a trade mark namely to guarantee the origin (and quality) of goods or services of a single undertaking. 2. USE WITH THE CONSENT OF THE PROPRIETOR This ‘tension’ finds an expression in Continental Shelf 128 Ltd v Hebrew The views expressed are personal and not necessarily those of the UK-IPO. Kerly’s Law of Trade Marks and...

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