The Intellectual Property Enterprise Court has upheld a claim for passing off of a pop band name. It also held that the first defendant’s trade mark for the name was invalid because it had been applied for in bad faith.
The first claimant company was incorporated in 1976. It was owned and controlled by the second claimant and his wife. The second claimant and the first and second defendants were involved with a band called the Rubettes at its formation.
The claimants claimed that the first claimant was the owner of goodwill in the name “the Rubettes” when used in relation to live music events, merchandising, music sales, and associated goods and services, so that they denoted goods and services authorised by the claimants. They claimed further that none of the defendants owned any goodwill associated with the name “the Rubettes” and that since late 2018 the defendants’ involvement in a band using, or being promoted under, the name “the Rubettes” amounted to passing off.
The defendants argued that there had been no agreement on how the goodwill generated by the band should be owned. Therefore, the band members owned the goodwill jointly and severally.
The court held that the claimants had established goodwill in the names from at least 1983 and that the defendants did not have concurrent goodwill. In autumn 2018 when the defendants began to look for work separately from the efforts of the first claimant to promote a band, they had never carried on trade as the Rubettes.
Further, the defendants had promoted performances as “the Rubettes” and were involved in the creation of websites and social media accounts using the name. The first defendant had also applied for a UK trade mark for the name. Those actions amounted to misrepresentation that was likely to cause damage to the first claimant. The damage related to the intrusion on the first claimant’s goodwill. The intrusion was inherent in the registration of domain names. Further, the claimants suffered loss and damage through the unwillingness of promoters to book the claimants’ band because of the defendants’ activities.
The first defendant had applied for the trade mark in bad faith because he had been motivated by an intent to interfere with the claimants’ activities (where he had no reason to believe that their interests were being abandoned) rather than any interest in protecting the defendants’ lawful use of the mark.
This case was based on the law of passing off. It would have been much easier if the Claimant had registered a trademark then in this case, it would have been in an even stronger position and would have had an easier case to argue.
Source: Practical Law
Case: Alan Williams Entertainments Ltd and another v Clarke and others  EWHC 1798 (IPEC) (13 July 2022)