That's actually a very cryptic title but all will become clear (sort of). I'll even throw in my favourite T-Rex meme at the end as an incentive to keep your interest!

Over the weekend I was quoted in an article in the Sunday Times about a trademark dispute that the GAA have found themselves caught up in.

Here's the article (Click to Enlarge):

And here's the important (i.e. "my") bit:

The Dispute:

In short summary a company registered in Mayo (Savanagh Securities Limited, T/A T-Rex Clothing) applied to have the GAA's trademark for "GAA" declared invalid. It's actually quite clever really...except, of course, it didn't succced.  

The main basis of the argument by T-Rex centres around the fact that the GAA is not an incorporated entity, so it doesn't have any separate legal personality. They say (according to the summary of their position by the deciding officer in the Patents Office) that because the GAA has no separate corporate personality: 

  1. allowing it to own a trademark is “it is contrary to public policy or to accepted principles of morality” - in this case contrary to the public policy that prohibits unincorporated associations from owning property
  2. and because a trademark can't be registered if  “it is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services”  the registration of a trademark in the name of an unincorporated association deceives the public into believing that the GAA is legally entitled to be registered as the proprietor of the mark GAA, when in fact it is not.

I can see the logic of the arguments, and, in fact, I think the deciding officer in the Patents Office could too, stating:

Section 26 of the Act states: “A registered trade mark is personal property” and Mr. Tierney argued that the GAA should not have been recorded as the Proprietor of such property. I agree. The questing is: is that sufficient grounds for invalidating a trade mark that has resided on the Register since 2007 (my emphasis)

The Decision

Ultimately it was decided that while the GAA shouldn't have been registered as the owner, this was to be considered as more of an administrative error than anything substantive, and couldn't be a basis on which to invalidate a trademark that had been on the register since 2007:

In my opinion the entering of the name GAA as the Applicant instead of what should legally have been “The trustees for the time being of the GAA” is no more than an administrative oversight. This oversight cannot, in equity, condemn the Proprietor to the loss of the property right, the invalidation of the trade mark, or provide cover for a third party to use the GAA name in the course of trade with impunity.

Specifically the deciding officer rejected the arguments set out above in relation to the trademarks being misleading or contrary to public policy. Apparently, T-Rex are appealing this decision.

Trusts Owning Trademarks

The quote from me used in the article states that "should T-Rex clothing win its appeal, it would have huge implications for trust law, casting doubt on the validity of holding property on trust"

That quote is taken a little bit out of context. The question is not whether Trustees can hold property on trust (they can) it's about how the ownership of trust property is recorded on a register such as the register of trademarks.

If we stick with the GAA example, the deciding officer basically decided that instead of "The GAA" being recorded as owner of the trademark, the owner should be recorded as "the trustees for the time being of the GAA". 

Fine, so who are they then? It's a circular argument, in my view. The register is to record whom the owners are, but stating "The trustees for the time being of the GAA" is just another way of saying "Some people written down in a document somewhere, and the names of those people change from time to time depending on what is said in another document somewhere". I would argue that it's not an accurate recording of the identity of the owners. Arguably (said he, arguing) what should happen, is that the Trustees for the time being are registered as co-owners "Pat, Mary and Jim" and when they are replaced as trustees they assign the ownership to the new trustees. 

Now you're deep into the question of whom owns something. In the case of land (like a field, for example), it's a split of legal ownership and beneficial ownership. If a trustee is on the title, the trustee 'owns' the land, and the beneficial owner (the beneficiary under the trust) has to rely on the trust deed to enforce their rights.  To the best of my knowledge, The Property Registration Authority would not allow you to register land in the name of "the trustees for the time being of trust x". The trustees have to be named, and the registry updated as and when they change. In my view, the same is true of the Trademark Register.

Again, I think this was partly acknowledged in the decision here which states:

Should the Controller register a mark in the name of an entity that is not entitled to own property, then there is a danger that the rights afforded by that registration may not be enforceable. That is not strictly a matter for the Controller, but a matter to be determined in the Courts where the registered proprietor may be seeking to enforce or protect its rights.

T-Rex made specific reference to Section 30(a) of the Trademarks Act 1996, which states:

No notice of any trust (express, implied or constructive) shall be entered in the register; and the Controller shall not be affected by any such notice.

The deciding officer felt this meant:

The provisions of Section 30(a) are to ensure that only the legal owner of the trade mark may be recorded as the proprietor on the Register. It does not mean that trustees cannot be the legal owners of trade marks. There are dozens of marks on the Register in the proprietorship of the trustees of various unincorporated associations, including sporting bodies and charities. What it does mean is that the Proprietor of a trade mark, for example Sean Soap, cannot be recorded on the Register as “Held in trust by Joe Soap, on behalf of Sean Soap”, because in this example Joe Soap is not the legal owner of the trade mark.

Section 30(b) of the Trademarks Act 1996 goes on to say:

Subject to the provisions of this Act, equities in respect of a registered trade mark may be enforced in like manner as in respect of other personal property.

This, I think, reflects the intention that one person could be named on the register, and therefore be the legal owner of a trademark, although another person may be beneficially entitled in equity.

But it doesn't mean (again, in my view) that you can use the phrase, as is commonly done for trademarks that they are held by "the trustees for the time being of trust x". One final point is that not all trusts have trust deeds. It is possible to have a bare trust, for example. In that case, it would be impossible to tell from the phrase "trustees for the time being of the Joe Bloggs trust" whom was either the beneficial or legal owner.

So, I think there's a really interesting point here about how you record ownership of a trademark if it's owned on trust. I, for one, will be advising my clients from now on not to register in the name of "the trustees for the time being" of any trust. Since this line of argument wasn't raised in the case, I don't see how it can form part of the appeal. I do think it may be the centre of a decision at some point in the future though, and I don't want one of my clients to end up on the wrong side of it.

Finally though, taking on that GAA like this?? Bad day for the parish, lad.

If you have any trademark queries, call Brian Conroy on +353 1 639300. If you have trust issues, I'm also a good listener.

Looking for More?

Fine, fine - Here's a list of trademarks "owned" by "the Gaelic Athletic Association" or one of its County Boards - 

And a list of those held by Cumann Lúthchleas Gael

You can find the Patents Office Decision HERE

And Finally