Exploring Use of the Same Mark by Multiple Undertakings
Edited by IIanah Simon Fhima
Chapter 5: The Approach of the UK-IPO to Co-ownership of Registered Trade Marks: Nanny Leaves the Registry, but not Completely
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...
You are not authenticated to view the full text of this chapter or article.