Shard Financial Media Ltd v Blue Moon Group Ltd & Anor

Where parties settle trade mark opposition proceedings, withdrawal of the proceedings and the avoidance of further costs and time may constitute consideration for an assignment. A binding oral agreement to assign a trade mark may arise where the parties have reached a clear meeting of minds, even though the formal assignment remains to be executed.

The agreement may include an implied term requiring the registered proprietor to take all steps necessary to effect a legal assignment complying with Trade Marks Act 1994, section 24(3). Once the agreement is made, the intended assignee may acquire the equitable ownership of the mark and may call for assignment of the legal title. A solicitor’s failure to prepare the formal assignment does not, without more, deprive the claimant of equitable relief on clean-hands grounds.

Shard Financial Media Ltd sought summary judgment against Blue Moon Group Ltd and its director in relation to the trade mark “Credit Today”. The mark had originally been applied for by both parties. Following negotiations in 2011, Blue Moon withdrew its opposition to Shard’s application and signed form TM16 seeking to assign its application to Shard.

The Intellectual Property Office later rectified the register in Blue Moon’s favour because no written assignment had been produced. Shard alleged that the parties had reached a binding oral settlement under which Blue Moon was required to complete the assignment. The defendants disputed consideration, contended that there was only an agreement to agree, denied the implied term and disputed the resulting trust. They also relied on Shard’s failure to prepare a formal assignment. The issue was whether any of those matters gave the defendants a real prospect of success at trial.

1. Summary judgment was granted. The defendants had no real prospect of succeeding on any of the grounds advanced.

2. The withdrawal of the parties’ respective opposition proceedings supplied consideration. Blue Moon was relieved of the risk of costs and the expenditure of time that would have followed if it had lost the oppositions.

3. The contemporaneous emails showed a clear meeting of minds. Mr Dugdill’s statement that he was sorting out the paperwork, together with his request that Shard’s solicitors complete form TM16, was inconsistent with an agreement merely to consider a future assignment. The parties had reached a binding oral agreement to settle the oppositions and assign Blue Moon’s application to Shard.

4. The agreement necessarily included an implied term requiring Blue Moon to take all steps necessary to effect the assignment. That included executing a legal assignment complying with section 24(3) of the Trade Marks Act 1994. The alleged position concerning goodwill did not prevent that conclusion, particularly because Blue Moon’s pleaded case was that any licence had already ended.

5. The oral agreement made Shard the equitable owner of the trade mark. Blue Moon therefore held the legal title for Shard and Shard was entitled to call for its legal assignment.

6. Shard’s failure to provide a draft legal assignment was an oversight by its solicitors, not conduct amounting to a lack of clean hands. The clean-hands argument was also unpleaded and should have been pleaded if relied upon.