Tuesday 27 November 2012

Tax schemes and assignment of unregistered trade marks in gross

Iliffe News and Media Ltd & Ors v Revenue & Customs [2012] UKFTT 696 (TC), a United Kingdom First-Tier Tax Tribunal decision, bears all the hallmarks of the sort of ruling that you make a mental note to read one day, then spot that it's 335 paragraphs long and determine to leave the reading of it to a happy day when you are paid to read it for the sake of a client. This blogger hasn't read it in full -- and he's not sure that he'd want to even if he were paid to do it -- but he felt that readers of the IP Finance weblog should at least be aware of it.

Essentially, this First-tier Tribunal ruling concluded that purported assignments of local newspaper titles or "mastheads" as unregistered trade marks by subsidiary companies to a newspaper publishing group holding company were in gross -- which means that they were assigned without the businesses to which they were attached -- and were also void for mistake as to the assignability of the subject matter of the purported assignment. The titles had been assigned to the holding company and then licensed in exchange for consideration that came to more than £50 million. The Tribunal ventured back into the history of the common law rule against assignments of unregistered trade mark in gross. While the basic rule was that you couldn't do it, the Trade Marks Act 1938 section 22 allowed such an assignment -- so long as the assigned unregistered mark was used in the same business as a registered trade mark which had been assigned (i) at the same time and (ii) to the same person, (iii) in respect of goods used in that business for which the registered trade mark was assigned. The Trade Marks 1994, which repealed the 1938 Act, liberalised the assignment of registered trade marks, but provided that nothing in that Act should be construed as affecting the assignment of an unregistered trade mark as part of the goodwill of a business. In this case, the unregistered trade marks were not intended

Much of the decision is taken up with a discussion of what would have been the effect of the assignment, in tax terms, had it been valid.  But there's more there than this blogger can handle ...

1 comment:

Neil Wilkof said...


Interesting discussion--it adds another quiver to the response bow when asked: "why should I register the mark as opposed to merely relying on rights of use?"