Re VERA LYNN, Lynn v Halewood International Brands Ltd.

The White Cliffs of Dover

Author Walter Mittelholzer 1894-1937

Jane Lambert

Trade Marks Registry (Ms A Skilton) Re VERA LYNN, Lynn v Halewood International Brands Ltd, BL O/766/19 12 Dec 2019

Dame Vera Lynn was born in 1917 and is still going strong.  Known as the forces' sweetheart her broadcasts, sound recordings and concerts contributed enormously to military and civilian goodwill during the second world war.  One of her most famous songs is The White Cliffs of Dover which she recorded in 1942.   Halewood International is a major manufacturer and distributor of alcoholic beverages whose brands include Crabbie's, Lambrini and Dead Man's Fingers.

On 14 June 2018 Halewood applied to register the name VERA LYNN for alcoholic beverages (except beer) and spirits in class 33.  Dame Vera filed a notice of opposition relying on s.5 (4) and s.3 (6) of the Trade Marks Act 1994.  In her statement of grounds Dame Vera said:

"The Opponent is an extremely well-known singer and performer whose musical recordings and performances have been popular since the Second World War. She is also very well-known for her charity work, including with ex-servicemen, disabled children and breast cancer.”

She added:

“…well-known personalities are known to endorse products, there will inevitably be confusion that the opponent has endorsed the applicant’s products.”

She complained that the trade mark application had been made in bad faith in that Halewood had not sought her permission to use her name as a trade mark.  Both parties filed evidence and instructed counsel.  A hearing took place before Ms. A Skilton on behalf of the Registrar of Trade Marks.   In Re VERA LYNN, Lynn v Halewood International Brands Ltd,  BL O/766/19 12 Dec 2019, the hearing officer upheld Dame Vera's opposition under both s.5 (4) and s.3 (6) of the Act.

The hearing officer considered s.5 (4) :

"A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented-
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade...
(b) ...
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an 'earlier right' in relation to the trade mark.”

She also referred to relevant authorities.   From paragraphs [55] and [56] of Judge Melissa Clarke's judgment in  Jadebay Ltd. and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400, (IPEC) (13 June 2017), Ms Skilton discerned the general principles of the law of passing off.  From paragraph 309 of Vol 97A of Halsbury, she obtained further guidance with regard to establishing a likelihood of deception.  In accordance with Mr Daniel Alexander QC's decision in  Advanced Perimeter Systems Limited v Multisys Computers Limited. [2012] RPC 14, she directed herself that the existence or otherwise of any "earlier right" within the meaning of s.5 (4) should be assessed from the date of filing of the application for the registration of the sign VERA LYNN as a trade mark, namely 14 June 2018.

While it was common ground that Dame Vera enjoyed goodwill in musical recordings, musical performances and charitable services, Halewood did not admit that she had an endorsement business.  In determining whether Dame Vera had the necessary goodwill to bring an action for passing off as at the 14 June 2019, the hearing officer referred to the House of Lords' decision in  Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217, Mr Justice Pumfrey's in South Cone Incorporated v Jack Bessant, Dominic Greensmith, Kenwyn House and Gary Stringer (a partnership) [2002] RPC 19 and Mr Justice Floyd's in Minimax GmbH & Co KG v Chubb Fire Limited [2008] EWHC 1960. She also considered some 40 pages of evidence of Dame Vera's radio broadcasts, film appearances and music recordings as well over 70 years of charity work, her inclusion in a book on famous British women and at least one commercial product endorsement.

Halewood argued that there could be no misrepresentation because VERA LYNN was cockney rhyming slang for gin. Gin was bought largely by consumers of a different generation from Dame Vera's. It was unlikely that any of those consumers would buy Halewood's product on the basis of an endorsement from Dame Vera.  The hearing officer rejected those arguments. The registration was sought for alcoholic beverages and spirits and not just gin.  The rhyming slam argument had not been pleaded as a defence and had been raised very late in the proceedings. There was no evidence that Halewood had applied to register the mark in order to benefit from the alleged secondary meaning.  Nor was there any evidence that the public would associate VERA LYNN with gin rather than with Dame Vera.  The hearing officer concluded at paragraph [55] of her decision:

"The question is whether on the balance of probabilities, a significant portion of the relevant public for the applicant’s alcoholic beverages would think that Vera Lynn had endorsed or recommended them. The opponent is a well-known entertainer, who has goodwill for charitable work, which includes allowing use of her name for fund raising purposes. On encountering the applicant’s goods, I find that a substantial number of persons would bring to mind the entertainer Vera Lynn and conclude that there was a connection between her and the opponent’s goods."

Having found the necessary goodwill and misrepresentation, it followed that damage to the opponent’s goodwill would arise.  At paragraph [59] of her judgment, Ms Skilton said:

"The opponent uses the goodwill in her name for the financial benefit of a number of charities. It is clear to see that by losing control of her goodwill, her ability to do this will be diminished. In other words, damage will result,"

The hearing officer found at [60] that the use of the applicant’s mark at the relevant date was liable to be restrained under the law of passing off in respect of the specified goods and that the opposition under s.5 (4) succeeded.  She added that Halewood's problem could not be solved by limiting its specification to gin since gin is included within the definition of alcoholic beverages.

Ms Skilton turned to s.3 (6):

"A trade mark shall not be registered if or to the extent that the application is made in bad faith.”

She directed herself that the relevant law on bad faith is summarized in paragraphs [131] to [138] of Mr Justice Arnold's decision in n Red Bull GmbH v Sun Mark Limited and Sea Air & Land Forwarding Limited  : [2012] EWHC 1929 (Ch).  She noted at paragraph [65] of her decision that the objection under s.3 (6) was that 

“The applicant has no permission to use the Opponent's name and is trying to exploit her good name and reputation to sell its goods. It is trying to ride on the coat tails of her goodwill and exploit her name.”

Ar paragraph [68] the hearing officer observed:

"For the purposes of a bad faith claim which relies entirely on the applicant’s intention, it is not possible for the opponent to file evidence which will show it. The applicant, on the other hand, has had ample opportunity to file such evidence and has not done so. In his skeleton argument and at the hearing Mr Jones submitted that the true position is that the applicant has chosen the trade mark as a play on words and rhyming slang. As I have already found earlier in this decision, the applicant has not advanced any reasons for making its application to register the trade mark VERA LYNN in class 33. The applicant’s representatives have provided evidence relating to Vera Lynn being cockney rhyming slang for gin, but the applicant itself has remained silent on the matter. There are no witness statements and there is no evidence which illustrates the rationale for the applicant filing the trade mark."

She concluded at [69]:

"The applicant may well believe it has acted legitimately in pursuit of its business. However, as per point seven of the decision in Red Bull the applicant’s own standards of honesty, or what the applicant considers to be acceptable commercial behaviour, is irrelevant. What matters is whether the applicant’s actions are such as would be judged by other honest people in business to be in bad faith. Having considered all of the material before me, I find that on the balance of probabilities, they would be."

This is a very carefully crafted decision with useful analyses of the authorities on goodwill, misrepresentation and bd faith.  Appeal from the registrar to the court or appointed person is available as of right. It is not necessary to seek permission from the hearing officer or appellate tribunal. It will be interesting to learn whether Halewood will avail itself of that opportunity and if so on what grounds,   Anyone wishing to discuss this case or trade marks generally should call me on 020 7404 5252 or send me a message through my contact form.