James Michael Keogh

[2008] ATMO 69

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark registration numbers 940275 PETER BROCK (signature) and 940276 05 BROCK Logo, both in Classes 16, 25, 35, 41 and 42 and both in the name of Peter Geoffrey Brock (deceased)

-and-

Application by James Michael Keogh for recordal of transmission to James Michael Keogh as executor of the estate of Peter Geoffrey Brock (deceased)

Delegate:	Michael Kirov
Representation:	Applicant: Graeme Clarke, SC assisted by Kate Beattie of Counsel
Decision:	2008 ATMO 69 An executor to whom probate of the will of a deceased trade mark owner has been granted is entitled to be recorded as registered owner under s.110 Trade Marks Act, 1995

Introduction

1. Peter Geoffrey Brock, the well known Australian racing car driver, died instantly on 8 September 2006 when the car he was driving crashed during the Targa West Rally held near Perth, Western Australia.  At the time of his death Mr Brock was the registered owner of trade mark registrations 940275 and 940276.

2. The matter now requiring decision originated in a determination by a delegate of the Registrar of Trade Marks (“the Registrar”) not to record James Michael Keogh and Eric Oliver Dowker (“the Joint Executors”), in their capacity as executors of the estate of Mr Brock, as registered owners of registrations 940275 and 940276.  The application for such recordal (“the Transmission Application”) was made pursuant to s. 109 Trade Marks Act, 1995 (“the Act”).  It was dated 21 February 2008 and sent to the Trade Marks Office (“the TMO”) by Keogh & Co of Melbourne, the solicitors acting for the Joint Executors and of which James Michael Keogh is the principal.  The determination by the delegate was contained in a letter dated 23 April 2008 from the TMO to Keogh & Co.

3. The TMO’s letter of 23 April 2008 nevertheless confirmed the Joint Executors’ right to be heard on the question of recordal.  Under cover of a letter dated 1 May 2008 from Keogh & Co to the TMO the Joint Executors applied to be heard and the matter came before me as a delegate of the Registrar for hearing in Canberra on 14 July 2008.  At the hearing Mr Keogh, the then sole remaining executor (see paragraphs 24 to 26 below regarding discharge of Mr Dowker as executor), was represented by Graeme Clarke SC, assisted by Kate Beattie of Counsel.

4. By letter dated 9 July 2008 Keogh & Co filed a Statutory Declaration by Mr Keogh sworn on 8 July 2008, together with Exhibits JMK-1 to JMK-17 (“the Keogh Declaration”), for my consideration in the making of this decision and to which reference is made below.

5. Also by letter dated 9 July 2008 a South Australian legal firm named Clelands Lawyers (“Clelands”) filed written submissions (including some 72 pages of annexed documentation) for my consideration with respect to recordal of transmission of registration 940276 in particular.  Clelands acts for an Australian company named TM Nominees Pty Ltd, trading as Southern Model Supplies (“TM Nominees”).  TM Nominees is currently defending an action brought by “the Estate of Peter Geoffrey Brock (deceased) and Biante Pty Ltd” in the Federal Court (proceeding No VID 1142 of 2007) for, inter alia, infringement of registration 940276 pursuant to s.120 of the Act.  As explained below, I have not found any of the material filed by Clelands relevant in reaching my decision.

   Preliminary Matters

   Relevant Will

6. Keogh and Co filed the Transmission Application on 21 February 2008 in the names of both Mr Keogh and Mr Dowker, being the executors named in one of three wills (“the 2003 Will”) allegedly made by the deceased.  Accompanying the Transmission Application was a certified copy of the grant of probate in respect of the 2003 Will granted to the Joint Executors by order of his Honour Justice Hollingworth of the Supreme Court of Victoria on 22 November 2007.  The other two wills allegedly made by Mr Brock were thus determined by his Honour either to have been revoked by the making of the 2003 Will or to be otherwise invalid and accordingly only the 2003 Will is relevant to my decision.

   Litigation by Potential Beneficiaries of Mr Brock’s Estate

7. For the sake of completeness I mention that in an earlier letter to the TMO dated 14 February 2008 Keogh & Co had sought clarification of telephone advice the TMO had provided on 11 February 2008.  That advice was apparently to the effect that the TMO’s then held view was that, in the absence of a relevant court order, only persons or entities named in a valid will or persons entitled under the rules of intestacy (as the case may be) could be recorded as registered owners of trade marks as a result of transmission (Keogh Declaration, paragraph 6).

8. In its letter of 14 February 2008 Keogh & Co had advised that, “Since the deceased’s death there has been on-going Supreme Court litigation concerning, among other things, the validity, or otherwise, of three wills allegedly made by him.”  Keogh & Co’s letter also mentioned that, although probate of the 2003 Will had been granted on 22 November 2007 to the Joint Executors, the proven will did nothing more than appoint the executors in question.  That is, the 2003 Will did not name any beneficiaries or dispose of Mr Brock’s estate at all.  Thus, apart from the appointment of the said executors, distribution of Mr Brock’s estate would otherwise in due course take place governed by the rules of intestacy under the Administration and Probate Act, 1958 (Vic).

9. In this regard Keogh & Co’s letter of 14 February further advised that,

   one application has been lodged under Part IV of the Administration and Probate Act, 1958 (Vic) and more may be lodged before the expiration of the statutory six month period after the date of grant of probate.

   The letter added that,

   Our clients are most anxious to protect the interests of the late Mr Brock’s estate and in particular the registered trade marks [940275 and 940276].  With this in mind and pending determination of Part IV application(s) by the Court our clients are anxious to become interim owners of the said trade marks.

10. The TMO’s determination of 23 April 2008 not to act on the Transmission Application may thus have been influenced by the TMO’s erroneous understanding that the information quoted above meant that the grant of probate on 22 November 2007 appointing the Joint Executors was subject to challenge.  Indeed, the TMO’s letter of 23 April to Keogh & Co stated in part, “From your letter of 14/2/08 the facts are…there has been one application contesting the grant of probate and more may be made during the next six months.”  In fact, as confirmed by Mr Clarke at the hearing, the grant of probate was not subject to challenge.  It is of course now apparent the actual and potential “Part IV application(s)” mentioned in Keogh & Co’s letter of 14 February were referring to applications seeking appropriate maintenance and support orders from the Victorian Supreme Court by persons “for whom the deceased had responsibility to make provision” (but had not made provision).  I confirm that any such applications by potential beneficiaries of Mr Brock’s estate are not relevant to my decision.

    Litigation involving TM Nominees and Possible Interest of the Peter Brock Foundation

11. As mentioned in paragraph 5 above TM Nominees, which I understand manufactures scale replica cars, is currently defending an allegation of infringement of registration 940276 brought pursuant to s. 120 of the Act (“the Infringement Action”).  The Applicants in that proceeding are (or until 26 June 2008 were –see paragraphs 24 to 26 below regarding discharge of Mr Dowker as executor and Exhibit JMK-13 to the Keogh Declaration) the Joint Executors (in their capacity as executors of Mr Brock’s estate under the 2003 Will) and a company called Biante Pty Ltd, which I understand is a licensee of rights in the trade mark subject of registration 940276.  TM Nominees is represented by Clelands in the Infringement Action.

12. Exhibits JMK-8, JMK-9 and JMK-10 to the Keogh Declaration are copies of documents filed in the Infringement Action being, respectively, the original Application and Statement of Claim dated 3 December 2007, TM Nominees’ original Defence dated 21 January 2008 and an amended Notice of Motion filed by TM Nominees on 24 April 2008.  As pointed out at paragraph 16 of the Keogh Declaration, and highlighted by Mr Clarke at the hearing, it is apparent from these documents that TM Nominees’ interest in preventing or delaying recordal of the Transmission Application is because its defence in the Infringement Action is partly based on its contention that, because the Joint Executors are not recorded as registered owners of registration 940276, the Joint Executors lack standing to rely on s.120 of the Act.  Indeed, Clelands’ written communications to the TMO and its submissions of 9 July 2008 confirm this.

13. Clelands first advised the TMO of the Infringement Action by letter dated 4 December 2007, that is some time before the Transmission Application was filed.  The letter included a copy of the Statement of Claim filed in the Infringement Action and Clelands indicated TM Nominees intended to defend the allegation of infringement on a number of grounds.  The stated purpose of Clelands’ letter was however “to notify [the Registrar of Trade Marks] that [TM Nominees] may also defend the claim on the grounds that the registration of the mark is a nullity in that the decision to register the mark pursuant to s.33 of the [Trade Marks] Act was made ultra vires the Act”.  The letter requested the Registrar “to exercise [her] power pursuant to s. 81 of the [Trade Marks] Act” by “correcting” certain errors TM Nominees alleged had been made in accepting the trade mark in question for registration in 2003 with its current statements of goods.  The letter continued, “Pursuant to s.13 of the Administrative Decisions (Judicial Review) Act 1975 (Cth), we request that [the Registrar] provide written reasons for your determination of this application.”

14. Clelands’ letter went on to say,

    Our client expects that the executors of the estate of the registered owner may make an application pursuant to s.110 (sic) of the Act to register particulars of the transmission of the mark. We assert that such application should not be determined until such time as our client’s application for the exercise of your power pursuant to s.81 of the Act is determined, and until such time as our client has received written reasons for your decision. We also assert our client’s entitlement at common law to be heard upon any application made pursuant to s.110 (sic) of the Act because the registration of the transmission will have the effect of recording the executors as the registered owners of the mark, who may then assert the same disputed rights against our client in the [infringement] proceedings.

15. The Deputy Registrar of Trade Marks responded by letter dated 18 December 2007 advising Clelands that s.81 of the Act could only be invoked in certain circumstances to correct a mistake (being an “error or omission”) and that such circumstances were not applicable to registration 940276.  Since the Registrar did not have the power to amend the registration under s.81 as requested “there has been no exercise of a function that could enliven s.13 Administrative Decisions (Judicial Review) Act.”  With respect to any possible future application by another party to record a change of ownership of registration 940276 the Deputy Registrar’s letter continued,

    Where the Registrar is aware that there is litigation concerning a registered trade mark, and an application to record a subsequent proprietor is filed, her practice is to give to any litigant that may be unaware of the assignment application, written notice thereof. The Registrar will allow the parties reasonable time to comment on this and, if necessary, obtain an injunction. However, s.110 does not give me the discretion to indefinitely defer recordal of an assignment. Your client is not a party to any assignment application that may be made and it would not, taking those two things together, be appropriate to hear your client on that matter.

    Should you have written material that would suggest that an anticipated assignment is invalid, you may wish to present it to me.  However, the dispute would, subsequently, be dealt with on a strictly ex parte basis between a delegate of the Registrar and any future applicant for the recordal of an assignment.

16. In a separate response to Clelands, also dated 18 December 2007, a member of the Hearings Section of the TMO noted that a directions hearing in the Infringement Action had been scheduled for 6 March 2008 and continued, “While the Registrar does not wish to be a party to this matter, she has instructed me to advise you that she does wish to be kept informed on a regular basis, as to the developments and the final outcome of the court proceeding.”  An essentially identical letter was sent by the TMO to Keogh & Co that same day.

17. Clelands’ response of 12 March 2008 reasserted TM Nominees’ right to be heard on any application that might be lodged for recordal of transmission or assignment of registration 940276, claiming that TM Nominees “has a legitimate interest in ensuring that the proper person is registered as the owner of the trade mark and seeks to put materials before the Registrar that are relevant to the exercise of the Registrar’s powers pursuant to s.109 and s.110 of the Act”.

18. As mentioned in paragraph 6 above the Transmission Application was filed by Keogh & Co on behalf of the Joint Executors on 21 February 2008 and the TMO informed Keogh & Co by letter dated 23 April 2008 of its determination not to record the change in ownership.  That letter concluded with the advice,

    I understand, too, that court proceedings concerning trade mark 940276 are on foot.  Following usual practice, I will copy this letter to the lawyers for the other party in that court matter.  In the event that a hearing is set down, the other party’s lawyers will be given an opportunity to appear and make submissions but costs would not be awarded.

19. On that same day, 23 April 2008, the TMO responded to Clelands’ letter of 12 March 2008 indicating that if the Joint Executors requested a hearing on the Transmission Application TM Nominees would be allowed the opportunity to appear and make submissions (but not to seek costs for so doing).  The Joint Executors did of course request a hearing.  TM Nominees however opted not to attend the hearing but, as mentioned, Clelands did file submissions on TM Nominees’ behalf for my consideration.

20. The submissions filed by Clelands centre on statements made in Affidavits by Mr Keogh sworn on 16 November 2007, by Mr Dowker sworn on 29 April 2008 and by a Gregory John Chambers sworn on 28 May 2007.  (I understand Mr Chambers to be one of two executors named in a will allegedly made in 1984 by Mr Brock.)  I understand the 16 November 2007 Affidavit formed part of the evidence in the Victorian Supreme Court proceeding which led to probate of the 2003 Will being granted to the Joint Executors on 22 November 2007, while the later two Affidavits appear to relate to subsequent applications to that Court for interim payments from Mr Brock’s estate of out of pocket expenses incurred in administering the estate.  Be that as it may, all three sworn statements refer to a possible claim on the intellectual property of Mr Brock’s estate (including registrations 940259 and 940260) by the Peter Brock Foundation, which I understand to be the entity established by Mr Brock before his death to exploit his intellectual property assets.

21. I do not however consider any such possible claims by the Peter Brock Foundation are relevant to my decision on the Transmission Application.  As discussed below I am satisfied the Transmission Application was made in accordance with the Act and in accordance with the Trade Mark Regulations, 1995 (“the Regulations”) and in such circumstances I do not believe the Registrar has any discretion under s.110 of the Act to refuse it.

22. Indeed, this was the view of the Full Federal Court (Beaumont, Heerey and Emmett, JJ) in Transport Tyre Sales Pty Ltd v Montana Tyres and Tubes Pty Ltd (1999) 43 IPR 481 (“the Montana case”) regarding what I agree with Mr Clarke’s submission was the analogous situation of recordal of an assignment under s.110. In that case Transport Tyre Sales Pty Ltd (“TTS”) had successfully applied under s.109 to be recorded as registerd owner of a particular trade mark registration. In support of the application for recordal TTS had filed with the TMO a copy of a deed of assignment from the then registered owner (“Ohtsu”). Shortly thereafter TTS commenced proceedings against Montana for infringement of the registration. In its defense Montana argued that the Registrar should not have recorded the assignment because, unbeknownst to the Registrar, Ohtsu had retained control of the mark by having TTS execute a separate (option) deed wherein TTS agreed to assign the registration back to Ohtsu if certain conditions were met or, after two years had elapsed, simply at Ohtsu’s request. That is, it appeared TTS had only sought recordal as registered owner to facilitate the infringement action it was launching against Montana. In dismissing Montana’s argument that the Registrar should not have recorded the assignment the Court said (at 491):

    Since a registered trade mark is a form of personal property, it may be subject to legal and equitable rights vested in persons other than the registered owner.  But nothing in the [Trade Marks] Act mandates the recording of all or any such interests.  On the contrary, Pt 11 provides a mechanism for the voluntary recording of claims to interests and rights in respect of trade marks.

    The fact that Ohtsu held certain rights under the option agreement in respect of the trade marks did not make Transport Tyre any less the owner.  As counsel for Transport Tyre argued, a person who grants an option over some form of property must of necessity be the owner.  Neither the registrar, nor anybody searching the register, would reasonably conclude that the bare fact of assignment indicated that no person other than the owner held any rights in respect of the trade marks.

    The registrar was given notice of the present proceeding, including a copy of the statement of claim, but did not seek to intervene. That fact in itself confirms the conclusion that non-disclosure of the option agreement was not a matter which materially affected the recordal of the assignment. The assignment was the document which established the title of Transport Tyre, and that had been disclosed, as required by s.109(2)(b) and reg. 10.1(a). In such a setting the registrar “must” record the assignment: s.110(1).

23. I further note in this regard Mr Clarke’s advice at the hearing that the Peter Brock Foundation is apparently represented by the well known law firm of Mallesons Stephen Jaques and that it has not seen fit to record any claim to a right or interest in registrations 940259 and 940260 under Part 11 of the Act.  Thus, whether or not the Peter Brock Foundation has a claim to some right or interest in the two registrations is not a matter the Registrar need consider with respect to recordal of the Transmission Application.

    Discharge of Mr Dowker as Joint Executor

24. In paragraph 27 of the Keogh Declaration Mr Keogh states, inter alia, “On 2 May 2008, by further order of Hollingworth J, Mr Dowker was discharged from his position as my co-executor by reason of his ill health.  Exhibit JMK-16 is a true copy of that order.”

25. The orders of 2 May 2008 made by Justice Hollingworth (in proceeding No. 5912 of 2008 in the Supreme Court of Victoria) relevant to my decision were to:

    - discharge Mr Dowker as executor of the 2003 Will;

    - grant Mr Dowker leave to retire as trustee of the estate of Mr Brock; and

    - confirm “[T]he assets of the estate vest in the remaining executor and trustee, James Keogh”.

1. At paragraph 33 of his declaration Mr Keogh states, “I also seek to amend the Transmission Application to refer to me alone as the person making the Transmission Application.”, a request reiterated by Mr Clarke, who tendered a further copy of Justice Hollingworth’s relevant orders at the hearing.  At the hearing I confirmed, and again confirm now, that this request is in order and that the Transmission Application (hereafter referred to as “the Amended Transmission Application”) is being so amended.

   Discussion on Recordal of the Transmission Application

2. The above-mentioned preliminary matters having been dealt with, I turn now to the substantive issue of recordal of Mr Keogh as registered owner of registrations 940259 and 940260 as requested in the Amended Transmission Application.

3. Section 106 of the Act provides for assignment or transmission of a registered mark and is reproduced below:

   (1)  A registered trade mark, or a trade mark whose registration is being sought, may be assigned or transmitted in accordance with this section.

   (2)  The assignment or transmission may be partial, that is, it may apply to some only of the goods and/or services in respect of which registration is sought or the trade mark is registered, but it may not be partial in relation to the use of a trade mark in a particular area.

   (3)  The assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods and/or services.

   Note:          For assignment and transmission see section 6.

4. In s.6 “transmission” is defined as follows:

   "transmission" means:

   (a)  transmission by operation of law; or

   (b)  devolution on the personal representative of a deceased person; or

   (c)  any other kind of transfer except assignment.

5. As put succinctly by Mr Clarke at the hearing, the question for the Registrar is a straightforward one.  Have registrations 940259 and 940260 been transmitted to Mr Keogh?  I do not believe it is necessary here to mention the authorities referred to in Mr Clarke’s submissions as to the meanings of the words “devolution” and “personal representative of a deceased person” and merely note I proceed on the basis that “devolution” means “pass by legal succession” and that “personal representative of a deceased person” means a person to whom probate has been granted, namely an executor.

6. I accept Mr Clarke’s submission that pursuant to s.13 of the Administration and Probate Act, 1958 (Vic) once probate of the 2003 Will was granted on 22 November 2007 all real and personal property of Mr Brock then vested in his executors as joint tenants (and now vests in Mr Keogh as sole remaining executor).  This of course includes registrations 940259 and 940260, which are defined in s.21(1) of the (Trade Marks) Act as “personal property”.  I am thus satisfied that the two registrations have been transmitted to Mr Keogh.

7. While not relevant to my decision I note that, notwithstanding the above quoted words of the Federal Court in the Montana case (paragraph 22 above), on the face of it s.109 of the Act appears to place an obligation on a person to whom a registered trade mark has been transmitted to apply to the Registrar for recordal of the transmission.  Section 109 is reproduced below:

   (1)  If a registered trade mark is assigned or transmitted:

   (a) the person registered as the owner of the trade mark; or

   (b) the person to whom the trade mark has been assigned or transmitted;

   must apply to the Registrar for a record of the assignment or transmission to be entered in the Register.

   (2)  The application must:

   (a)  be in an approved form; and

   (b)  be filed, together with any prescribed document, in accordance with the regulations.

   Note:          For approved form and file see section 6

8. Section 6 states that ‘"approved form" means a form approved by the Registrar for the purposes of the provision in which the expression appears.’ and that ‘"file" means to file at the Trade Marks Office.’  The (original) Transmission Application was filed with the TMO in an “approved form” designed by the TMO itself and available for download on IP Australia’s website.  Taking into account the discharge of Mr Dowker as co-executor, it requests recordal of “James Michael Keogh as executor of the estate of Peter Geoffrey Brock (deceased)” as registered owner of the two registrations in question.

9. Section 109(b) also required the Transmission Application to be filed “together with any prescribed document, in accordance with the regulations”.  The relevant regulation is reg.10.1(a), which is as follows:

   For the purposes of paragraphs 107 (2) (b) and 109 (2) (b) of the Act (which deal with assignment and transmission), the following documents are prescribed:

   (a)    a document that establishes the title to a trade mark of the assignee, or of the person to whom the trade mark has been transmitted;

10. As highlighted in the Keogh Declaration (paragraph 12 and Exhibit JMK-7) and by Mr Clarke in his submissions, paragraph 3.2 of Part 43 of the “Trade Marks Office Manual of Practice and Procedure”, a publication of the TMO made available to the public on IP Australia’s website, states:

    A prescribed document that must accompany every application is a document that establishes proof of title to the trade mark(s) (reg. 10.1). The document may be filed as an original or a copy. It may consist of a

    ▪ deed of assignment;

    ▪ merger document;

    ▪ simple letter of assignment;

    ▪probate document in the case of a deceased owner, or death certificate and copy of last will and testament;

    ▪ legislative instrument of transmission;

    ▪ declaration.

    The proof of title document should show the full name and address of both parties, the trade mark(s) being transferred (except in the case of merger documents) and should be signed and dated at least by the current owner.

    I note in passing that the last sentence of the extract quoted above is obviously inapplicable where the “current owner” is deceased.

11. In support of the Transmission Application Keogh & Co filed, to quote from its covering letter of 21 February 2008, the following:

    - a document that establishes the title to the Trade Marks of the Executors as required by reg.10.1 of the Trade Mark Regulations 1995, the grant of probate by the certified copy of the Order of the Honourable Justice Hollingworth of the Supreme Court of Victoria dated 22 November 2007: per 43.3.2 of the Trade Marks Manual [and]

    - a certified copy of the Probate granted to Mr James Michael Keogh and Mr Eric Oliver Dowker on 22 November 2007.

12. I am thus satisfied that the requirements of reg.10.1(a) were met and that the Transmission Application accordingly conformed with the requirements of s.109 of the Act.

13. I turn now to s.110 of the Act, which is reproduced below:

    (1)  If the application complies with this Act, the Registrar must, at, or within, the time provided for in the regulations:

    (a)  enter the particulars of the assignment or transmission in the Register; and

    (b)  register the person to whom the trade mark has been assigned or transmitted ( beneficiary ) as the owner of the trade mark in relation to the goods and/or services in respect of which the assignment or transmission has effect.

    (2)  The particulars are taken to have been entered in the Register on the day on which the application was filed, and the registration of the beneficiary as the owner of the trade mark is taken to have had effect from and including that day.

    (3)  The Registrar must advertise in the Official Journal:

    (a)  the recording of the assignment or transmission; and

    (b)  the registration of the beneficiary as the owner of the trade mark.

14. As indicated in paragraph 21 above, where the requirements of s.109 have been met s.110 does not on the face of it give the Registrar any discretion to refuse recordal of an assignee or transmittee as registered owner. (For the sake of completeness I note that regs.10.4(1) and (2) do provide for two exceptions to this obligation on the Registrar, at least where there are no relevant recordals of claims by third parties to rights or interests under Part 11 of the Act, namely when (a) the application to assign or transmit the trade mark is withdrawn or (b) a prescribed court determines otherwise.)

15. That the Registrar has no discretion under s.110, as mentioned, was the conclusion of the Full Federal Court in the Montana case in relation to recordal of an assignment and I see no reason why this would not also apply, mutatis mutandis, in relation to recordal of a transmission. That said, the TMO’s determination of 23 April not to record the Transmission Application appears to have been predicated on the presence in s.110(1)(b) of the word “beneficiary”. In certain contexts the word “beneficiary” may of course have very specific meanings, such as when, for example, one talks of a “beneficiary” under a life insurance policy, a “beneficiary” under a trust, or a “beneficiary” under a will. It is apparent, I believe, that the original determination not to record the Transmission Application was because the Joint Executors were applying for recordal in their capacity as executors and the word “beneficiary” in s.110(1)(b) was as a result erroneously interpreted by TMO staff as specifically meaning “beneficiary under a will” to the exclusion of any other class of transmittee.

16. In fact, the word “beneficiary” is on the face of it unambiguously defined in s.110(1)(b) itself as having the much more general meaning “person to whom the trade mark has been assigned or transmitted”. When this is understood it is clear there is no impediment contained in s.110 to recordal of an executor as registered owner of a trade mark following its transmission under a will. The misinterpretation of the word “beneficiary” by TMO staff was, it must be said, anticipated and specifically mentioned in Keogh & Co’s letter to the TMO of 21 February 2008 which accompanied the Transmission Application but regrettably the issue has only now received due consideration.

17. The final matter I would mention concerns the date of recordal of the Amended Transmission Application, which I understand may be relevant to TM Nominees’ defense in the Infringement Proceedings involving registration 940276. Here s.110(2) is on the face of it quite clear. Firstly, the “particulars” of the transmission “are taken to have been entered in the Register on the day on which the application was filed” (that is, 21 February 2008). Secondly, “the registration of the beneficiary [that is, Mr Keogh, being the person to whom the trade marks have been transmitted] as the owner of the trade mark[s] is taken to have had effect from and including that day”.

    Decision

18. I have found the Transmission Application was made in accordance with the Act and Regulations and that the requested amendment to the Transmission Application to take into account the discharge of Mr Dowker as executor is in order. In these circumstances I find that the Registrar is obliged under s.110 to act on the Amended Transmission Application. I thus direct that particulars of the transmission of registrations 940275 and 940276 to Mr Keogh be entered in the register with effect from 21 February 2008 and that “James Michael Keogh as executor of the estate of Peter Geoffrey Brock (deceased)” be recorded as registered owner of the two registrations with effect from and including that day.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    4 August 2008