The Rubettes - Alan Williams Entertainments Ltd v Clarke

The Rubettes. (2022, July 18).

In Wikipedia. https://en.wikipedia.org/wiki/The_Rubettes Licence CC BY 3.0

Jane Lambert

Intellectual Property Enterprise Court (Ms Pat Treacy) Alan Williams Entertainments Ltd. and another v Clarke and others [1922] EWHC 1798 (IPEC) (13 Jully 2022)

This was a dispute between former members of a rock group known as The Rubettes.  The claimants were Alan Williams Entertainments Ltd. and one Alan Williams.  The company was owned by Mr Williams and his wife.  Mick Clarke and John Richardson, the first and second defendants, had performed with Mr Willians in the original band.   The third defendant, Steve Etherington. had joined the band later. The claimants claimed that the company (or alternatively the company and Mr Williams) owned the goodwill in the names "The Rubettes" or "The Rubettes featuring Alan Williams" ("the Rubettes' Names") in relation to live music events, merchandising, music sales and associated goods and services.

From Autumn 2018 the defendants began to perform together as "The Rubettes" without the claimants' licence.  They registered that name as a trade mark, again without the claimants' permission.  The claimants sued the defendants for passing off and a declaration that the trade mark was invalid on the grounds that it had been registered in bad faith and that its use in the UK could be prevented by an action for passing off pursuant to s.5 (4) of the Trade Marks Act 1994. 

The action came on for trial before Ms Pat Treacy sitting as a deputy judge of the High Court between 25 and 26 May 2022.  She delivered judgment on 13 July 2022 (see Alan Williams Entertainments Ltd and another v Clarke and others [2022] EWHC 1798 (IPEC) (13 July 2022),   By para [273] of her judgment she found for the claimants on every issue except one.

The Issues

At the case management conference, the court ordered the following questions to be tried:

"Passing off
(i) When did the Defendants commence the acts complained of (‘the relevant date’)?
(ii) At the relevant date, was AWEL (or AWEL and Mr Williams together) the owner(s) of goodwill associated with the Rubettes' Names or any of them?
(iii) At the relevant date, were the Defendants or any of them the owners of any goodwill associated with the Defendants’ Signs or any of them?
(iv) In the light of the above, does the use by the Defendants of the Defendants’ Signs or any of them amount to a misrepresentation that the Defendants’ live music events, merchandising, music sales and associated goods and services are the goods and services of the First Claimant (alternatively the Claimants together) or are otherwise associated or connected with or authorised by the First Claimant (alternatively the Claimants together)?
(v) Has any misrepresentation made by the Defendants damaged or is it likely to damage any goodwill found owned by the AWEL (alternatively AWEL and Mr Williams together)?

Trade mark invalidity
(vi) Was the application for the UK TM made in bad faith?
(vii) In light of the findings on passing off and bad faith, is the UK TM invalid?

General
(viii) If passing off is shown, were the acts of passing off flagrant and/or calculated to benefit the Defendants in excess of the likely damages?"

Passing off

At para [65] of her judgment, Ms Treacy noted that it was common ground that "a claimant in a passing off case must show that:
(i) the claimant owns goodwill in a business, the goodwill being attached to some get up or feature;
(ii) there has been a relevant misrepresentation on the part of the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by them are the goods or services of the claimant; and
(iii) that there has been consequent damage to the claimant’s goodwill."

Goodwill

There was, however, a dispute as to who owned the goodwill appertaining to the Rubettes' Names. 

The deputy judge traced the parties' dealings with each other back to the earliest days of the band. Throughout that period their business had been managed by a company though not always by the first claimant.  At no time had they performed as a partnership at will. 

She concluded at [172] that the claimants had established goodwill in the Rubettes Names from 1983 at the latest and that the defendants never acquired concurrent or senior goodwill.  Until the Autumn of 2018, the defendants had never carried on trade as ‘the Rubettes’ or any similar name with or without a suffix.

Misrepresentation

The deputy judge held at [194] that registering domain names and social media accounts and obtaining a trade mark using the name ‘the Rubettes’ was actionable.  In support of her finding, she relied on the judgment of the Court of Appeal in British Telecommunications Plc v One in a Million Ltd [1999] FSR1 and Lord Justice Jacob in Phones 4U Ltd v Phone4U.co.uk Internet Ltd [2006] EWCA Civ 244.  

Conclusion on Passing off

Ms Treacy concluded at [204] that the defendants had engaged in passing off by their admitted conduct and use of ‘the Rubettes’ sign.

The S.5 (4) Ground

S.47 (2) (b) of the Trade Marks Act 1994 provides that the registration of a trade mark may be declared invalid on the ground that there is an earlier right in relation to which the condition set out in s. 5 (4) is satisfied.  I have already mentioned that subsection above.  As the deputy judge had found passing off it followed that the registration was invalid on that ground.

Bad Faith

S.47 (1) of the 1994 Act states that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of s.3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).  S.3 (6) provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith.

Ms Treacy directed herself at [246] that:

"A court considering whether an application to register a trade mark is made in bad faith is concerned to avoid two main potential types of abuse: the first against the registry; and the second against third parties. The abuse alleged here is against the Claimants. The allegation is that Mr Clarke applied for the UK TM to interfere with the lawful activities of Mr Williams and AWEL. In determining whether Mr Clarke acted in bad faith, it is necessary to assess the situation in the round and consider whether the evidence establishes on the balance of probabilities that Mr Clarke sought to do what has been alleged and, if so, whether his conduct falls short of the standards of acceptable commercial behaviour in the music industry."

As soon as they acquired their trade mark, the defendants wrote to the claimants,  They notified them of their registration and sought undertakings to cease using "the Rubettes' Names".  She considered the third defendant's evidence and rejected it for the following reasons:

• "Mr Clarke was well aware of the activities over many years of AWEL and Mr WilliamsMr Clarke did not have a genuine belief that AWEL and Mr Williams were abandoning their business in the UK;
• Mr Clarke did not tell either AWEL nor Alan Williams of his plans to set up a further competing band or to register the UK TM;
• Mr Clarke had no reasonable grounds to believe that the UK TM was necessary to enable him to work, or that there was any unconnected third party use against which the mark might be legitimate protection;
• once obtained, the mark was used to interfere with the activities of AWEL and Mr Williams by writing to venues working with AWEL and Mr Williams, relying on the UK TM and raising the prospect of litigation;
• Mr Clarke’s explanations of that correspondence during cross‑examination were completely new evidence; and
•  the combination of that correspondence and Mr Clarke’s unconvincing evidence, combined with his failure to mention that correspondence in his written evidence, cast light on his intentions at the date of application."

She concluded at [250[ that the application to register the band name as a trade mark 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.   The trade mark was subsequently exercised so as to interfere with the claimants’ business. The third defendant's conduct in applying for the mark fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the music business.

Flagrancy

The claimants invited the deputy judge to make findings as to flagrancy for the purpose of an award of additional damages under reg 3  of the Intellectual Property (Enforcement) Regulations 2006.  One of the grounds upon which they relied was that the defendants have gained increased opportunities from their passing off which they would not have had if they had started off under a new name, such as connections with promotors and venues they wouldn’t otherwise have got.  Ms Treacy held that that was not a matter that she could determine without additional held from counsel as to the evidence.

Conclusions

Ms Treacy's findings on each of the issues for trial were as follows:

"Passing off
(i) When did the Defendants commence the acts complained of (‘the relevant date’)?

The relevant date is Autumn 2018.

(ii) At the relevant date, was AWEL (or AWEL and Mr Williams together) the owner(s) of goodwill associated with the Rubettes' Names or any of them?

At the relevant date, the Claimants were the owners of relevant goodwill.

(iii) At the relevant date, were the Defendants or any of them the owners of any goodwill associated with the Defendants’ Signs or any of them.

At the relevant date, the Defendants did not own any relevant goodwill.

(iv) In the light of the above, does the use by the Defendants of the Defendants’ Signs or any of them amount to a misrepresentation that the Defendants’ live music events, merchandising, music sales and associated goods and services are the goods and services of the First Claimant (alternatively the Claimants together) or are otherwise associated or connected with or authorised by the First Claimant (alternatively the Claimants together)?

The Defendants’ conduct amounts to a misrepresentation sufficient to engage the tort of passing off.
(v) Has any misrepresentation made by the Defendants damaged or is it likely to damage any goodwill found owned by the AWEL (alternatively AWEL and Mr Williams together)?

The misrepresentation has caused damage to the Claimants’ goodwill.

Trade mark invalidity

(vi) Was the application for the UK TM made in bad faith?

Yes.

(vii) In light of the findings on passing off and bad faith, is the UK TM invalid?

Yes.

General

(viii) If passing off is shown, were the acts of passing off flagrant and/or calculated to benefit the Defendants in excess of the likely damages?

Not yet determined."

It followed that the claimants had succeeded and the only remaining issue concerned the consequences of their success.

Further Information

The claim succeeded because the band was administered and promoted by a management company.  In many if not most cases the musicians operate as a partnership at will.   Had that been the case the outcome could have been very different.

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