Following the reunion of the Gallagher brothers, Oasis aren’t the only Manchester band that fans are hoping will get back together. Media attention has been on legendary band The Smiths.

Last week, Morrissey posted on his website that Johnny Marr owns 100% of the intellectual property rights of The Smiths name. This comes days after Morrissey said that the proposed greatest hits album by The Smiths titled ‘Smiths Rule OK!’ and single ‘Hand in Glove’ have been blocked. The statement read:

“J Marr has successfully applied for 100% trademark rights / Intellectual Property ownership of the Smiths name. His application has been accepted on whatever oaths or proclamations he has put forward. This action was done without any consultation to Morrissey, and without allowing Morrisey the standard opportunity of ‘objection’. Amongst many other things, this means that Marr can now tour as The Smiths using the vocalist of his choice, and it also prohibits Morrissey from using the name whilst also denying Morrisey considerable financial livelihood.”

“Morrissey alone created the musical name ‘The Smiths’ in May 1982.”

Johnny Marr also released a statement via his management and said that he did contact Morrissey via his representatives to work together protecting The Smiths name. The statement continues and says that he received no response so registered the trade mark himself.

Marr also added that he had registered the mark on behalf of himself and his former bandmates.

“In 2018 following an attempt from a third party to use The Smiths’ name – and upon discovery that the trademark was not owned by the band – Marr reached out to Morrissey, via his representatives, to work together in protecting The Smiths’ name.

A failure to respond led Marr to register the trademark himself. It was subsequently agreed with Morrisey’s lawyers that this trademark was held for the mutual benefit of Morrisey and Marr.

As a gesture of goodwill, in January 2024, Marr signed an assignment of joint ownership to Morrissey. Execution of this document still requires Morrissey to sign.”

This suggests Morrissey has at least an equitable interest in the registered trade mark alongside Marr’s legal interest. However, co-owned IP rights are well known for being difficult to utilise, as the co-owners often have competing interests and opinions on how to commercialise their rights. This can all too often lead to a stalemate where the rights end up not being used at all.

Who owns the name The Smiths?

At JMW we use specialist software to identify details of registered trade marks across the globe. The word mark ‘The Smiths’ was registered at the Intellectual Property Office in 2018. The legal owner of the word mark is currently NV Official TM Limited and according to records at Companies House, the directors of that company are Johnny Marr and Angela Marr.

The word mark is registered in six classes which means that the mark is protected from being used by anyone else other than with the consent of NV Official TM Limited. The classes are:

• 9 – music recordings;
• 14 – jewellery;
• 16 – record sleeves, books and photographs;
• 18 – leather goods;
• 25 – clothing and footwear; and
• 41 - Entertainment and leisure services.

In the statement Marr did say that he has drafted an assignment, which seems to suggest he is ready to share legal ownership of the word mark with Morrisey.

The band would also have accrued significant goodwill (i.e. unregistered trade mark rights) in the sign “The Smiths” through its music in the 1980s, given its prominence in the UK music industry. Whether that goodwill is still alive and/or has been assigned to any particular entity is not publicly known.

Can a trade mark be challenged?

The best time to challenge a trade mark is when the application is made at the intellectual property office. A period of two months is given in which the trade mark can be challenged. That is usually the most effective way to challenge a trade mark, because once the mark is registered it can become more difficult, but not impossible.

Once a mark has been registered, it can be invalidated on either absolute or relative grounds which mirror the grounds of opposition to a trade mark application. Trade marks can also be revoked, for instance by reason of non-use. If a trade mark has been registered, it is not too late to challenge its registration – you may have prior rights, such as a pre-existing goodwill, a copyright work, or an earlier registered trade mark, which you can rely upon.

Trade mark disputes of this nature can be complex and expensive and therefore brands and bands alike are advised to register their name at the earliest opportunity in order to more easily protect their rights.

The lessons?

This is a lesson for anyone with a brand, whether it is a rock brand or another business, that it is vitally important to register your trade mark. Once the mark has been registered, it makes it difficult for a third party to use your name. After all, IP rights are monopoly rights.