Mewburn Ellis acted on behalf of a saddlery company in a complex legal dispute over who owned the trade mark ReactorPanel.
Our client, Woodward & Woodward (a saddlery company), had paid royalty payments for many years to license the use of the mark ReactorPanel. They believed the company that they were licensing it from owned rights to the mark.
A couple of years ago Woodward & Woodward discovered that the company did not own, and had never owned, the UK trade mark registration for the ReactorPanel mark. The company had attempted to purchase the trade mark registration from the original owner but, owing to a faulty assignment, they never actually took ownership.
Given that the original owner had been liquidated, and so no longer existed, the UK registration for ReactorPanel was bona vacantia – i.e. an ownerless property and as such had passed to the Crown.
In order to safeguard their position and prevent the registration falling into the hands of a third party, our client bought the UK registration from the Treasury Solicitor and stopped royalty payments to the company they had been paying.
When the company discovered this, they filed a rectification action at the UK Intellectual Property Office against the registration acquired by our client. They argued that they were the legitimate owner of the UK registration and the trade mark register should be amended to reflect this.
The rectification action relied on complex legal arguments which contended that our client was acting as their ‘agent or representative’ in purchasing the registration or that a constructive trust should be implied. Substantial evidence and written arguments were filed with the UK Intellectual Property Office and a hearing was held to decide the matter.
A decision was issued in our client’s favour. The result of this was that our client continues to be the owner of the UK registration for ReactorPanel. This allows them to prevent third parties from using it or a similar mark for their saddlery products or similar products, and they no longer have to pay any licensing fees. Our client was also awarded a significant contribution towards its costs.