English High Court judge strikes out bad faith trade mark for name of 1970s pop band

About this case:

• Citation:
  [2022] EWHC 1798 (IPEC)
• Judgment:
  External link
• Court:
  England and Wales High Court
• Judge:
  Ms Pat Treacy

Alan Williams, and his company Alan Williams Entertainments Ltd, raised the claim against defendants Mick Clarke, John Richardson and Steve Etherington alleging that their use of the Rubettes name since 2018 amounted to passing off, and that a trade mark application they were granted in January 2019 was made in bad faith.

The case was heard by judge Pat Treacy in the High Court of Justice (Chancery Division), with Michael Smith appearing for the claimants and Richard Colbey for the defendants.

Lineup dispute

The Rubettes were originally formed in 1974 with a membership including Mr Williams, Mr Clarke, and Mr Richardson. Mr Williams performed under the Rubettes name until 2003, when his band began to use the name “the Rubettes featuring Alan Williams”. Mr Clarke and Mr Williams performed in these bands for various periods up to 2018. Mr Etherington was not part of the original lineup but performed as part of the later lineup between 2016 and 2018.

On 1 July 2018, Mr Williams disbanded the then-lineup by email partly due to disputes between the members and partly due to a plan to move to Australia. At some point before March 2019, the defendants formed a new band using the Rubettes name. It was the claimants’ position that the defendants had not been the owners of any goodwill associated with the name at the relevant date.

It was submitted for the claimants that they had accrued goodwill in the Rubettes name since 1983 which they could assert against anyone except persons involved in the contractual arrangement by which they added “featuring Alan Williams” to the name. Any interest in the name owned by Mr Clarke and Mr Williams was transferred to AWE Ltd when the Rubettes’ former management company was dissolved and therefore they had none at the time they formed the 2019 band.

For the defendants it was submitted that the goodwill to the name was jointly owned between the members and had grown organically since 1974. Mr Williams had abandoned his goodwill when he dissolved the Rubettes in the July 2018 email, while the defendants had generated their own goodwill by selling their musical skills in such a way as to do so.

No special status

In her opinion, Judge Treacy said of the goodwill in the Rubettes name: “The evidence supports Mr Smith’s submission that it was AWEL and Mr Williams who were responsible for promoting the band. Promotion is an essential part of the trading activities of any band (or of any entertainer). Since 1983, AWEL has traded through the band and has accrued goodwill in ‘the Rubettes’. The critical question is whether, at any time between 1983 and the autumn of 2018, either Mr Clarke or Mr Richardson accrued any concurrent goodwill.”

She continued: “The fact that Mr Richardson and Mr Clarke were members of the original Rubettes line up does not of itself give them any special status. Goodwill relates to rights which accrue to business and trade as otherwise it would lack any sensible defining boundary. While in appropriate circumstances one or more musicians trading as individuals might accrue rights concurrently in the same band name either with each other or with another body primarily responsible for trading as that band, or both, there is no evidence that that has occurred here.”

Addressing the passing off claim, Judge Treacy concluded: “The use by the Defendants of the word ‘Rubettes’ to signify the services that they supply is a misrepresentation. The Claimants have goodwill associated with that name and the use of it by others in trade as a badge of origin is a misrepresentation, likely to cause confusion as to their connection with AWEL’s business and, in the circumstances of this case, likely to cause damage to AWEL.”

On trade mark, she added: “Mr Clarke’s application was not motivated by an interest in protecting against unlawful use. It was motivated by an intent to interfere with the Claimants’ legitimate conduct in a context where there was no reasonable basis to believe that those interests were being abandoned, and the UK TM was subsequently exercised so as to interfere with the Claimants’ business. Mr Clarke’s conduct in applying for the UK TM falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the music business.”

Judge Treacy therefore concluded that the defendants had caused damage to the claimants’ goodwill and declared their trade mark to be invalid.