Trade Marks: Fifth Avenue Entertainment LLC v Commodore Entertainment Corporation
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The Commodores in Hallandale, Florida in the 1990s Author: Carl Lender, Licence: CC BY-SA 3.0. Source: Wikimedia Commons |
This was an appeal by Fifth Avenue Entertainment LLC ("Fifth Avenue") against the decision of the hearing officer, Mr Allan James, on 20 March 2025 to dismiss Fifth Avenue's application to register THE COMMODORES as a UK trade mark for goods in class 9 and services in class 41 under s.5 (4) (a) and s.3 (6) of the Trade Marks Act 1994. The appeal came before Mr Justice Richards on 7 Oct 2026. The learned judge gave judgment on 23 Oct 2026 (see Fifth Avenue Entertainment LLC v Commodore Entertainment Corporation [2026] EWHC 2730). By para [103] of that judgment, his lordship dismissed the appeal.
Background
"The Commodores" or "Commodores" are a US funk and soul band. They were formed in 1968. Their founding members were Lionel Richie, Thomas McClary, William King, Milan Williams, Ronald LaPread and Walter Orange. They had several hits in the UK, including Easy, Three Times a Lady, Sail On and Nightshift which won a Grammy in 1986. In 1978, the band members formed a partnership under Alabama law which precluded any member from using the band name on his own account. It provided that if any member left, the partnership would continue and would continue to have the right to use the group name.
Lionel Richie left the band in 1982, and new members joined it, prompting an amendment of the partnership agreement. The amended agreement provided that the partnership would no longer perform as a group of artists but would own, maintain and lease vehicles and equipment to Commodores Entertainment Corporation ("Commodore Entertainment") instead.
Thomas McClary left the band in 1984. The circumstances of his departure were unclear. A letter purporting to confirm his departure was alleged to be a forgery.
The remaining members, including recruits, continued to perform as "The Commodores" or "Commodores", making several tours of Europe and the UK under those names between 1992 and 2012. Commodore Entertainment obtained US trade marks for the band's names. The partnership agreement expired in 2014.
Mr McClary set up Fifth Avenue and started to perform as "The Commodores featuring Thomas McClary". He made one tour of the UK under that appellation. Commodore Entertainment sued Fifth Avenue and Mr McClary for trade mark infringement and obtained orders restraining them from infringing its marks in the USA.
The Opposition
Fifth Avenue applied to the European Union Intellectual Property Office ("EUIPO") to register THE COMMODORES as a European Union trade mark on 14 Oct 2014. Commodore Entertainment opposed the application in the EUIPO and the opposition was not resolved by the time the UK left the European Union in 2021. Fifth Avenue applied to register THE COMMODORES as a UK trade mark under para 25 of Sched 2A to the Trade Marks Act 1994. Once again, that application was opposed by Commodore Entertainment in the Intellectual Property Office Trade Marks Registry under s.38 (2) pursuant to s.5 (4) (a) and s.3 (6) of the Act. As I mentioned in the first paragraph, the opposition came before Mr James who found for the opponent.
The Appeal
Fifth Avenue appealed against Mr James's decision to the High Court under s.76 on the following grounds:
"Ground 1: The Hearing Officer erred in law by assuming, without evidence, that Alabama law governing the 1978 Agreement and the 1984 Agreement mirrored English partnership-at-will principles, wrongly concluding that Thomas McClary, lost all goodwill rights upon departure in 1984.
Ground 2: The Hearing Officer erred in law and procedure and/or made a decision that was factually perverse and/or outside the range of reasonable decisions that could have been made, by giving insufficient weight to forensic evidence suggesting the 1984 Letter was fraudulent and by overlooking its defective execution.
Ground 3: The Hearing Officer erred in law by misapplying the test for bad faith under section 3 (6), wrongly finding the Appellant's application was made with dishonest intent.
Ground 4: The Hearing Officer made a finding of fact on bad faith that cannot reasonably be explained.
Ground 5: The Hearing Officer made a finding of fact on passing off that cannot reasonably be explained and/or made an error of law, as he conflated the Respondent acting as if they had acquired the goodwill with lawful ownership and/or failed to ask whether the goodwill could have been acquired without unlawful trading by the Respondent."
"Ground 1: The Hearing Officer erred in law by assuming, without evidence, that Alabama law governing the 1978 Agreement and the 1984 Agreement mirrored English partnership-at-will principles, wrongly concluding that Thomas McClary, lost all goodwill rights upon departure in 1984.
Ground 2: The Hearing Officer erred in law and procedure and/or made a decision that was factually perverse and/or outside the range of reasonable decisions that could have been made, by giving insufficient weight to forensic evidence suggesting the 1984 Letter was fraudulent and by overlooking its defective execution.
Ground 3: The Hearing Officer erred in law by misapplying the test for bad faith under section 3 (6), wrongly finding the Appellant's application was made with dishonest intent.
Ground 4: The Hearing Officer made a finding of fact on bad faith that cannot reasonably be explained.
Ground 5: The Hearing Officer made a finding of fact on passing off that cannot reasonably be explained and/or made an error of law, as he conflated the Respondent acting as if they had acquired the goodwill with lawful ownership and/or failed to ask whether the goodwill could have been acquired without unlawful trading by the Respondent."
The Issues
The judge noted at para [36] of his judgment that there were three separate but related issues pervading those grounds of appeal:
ii) Whether Commodore Entertainment owned any goodwill associated with the name "COMMODORES" at any point after 1984, and particularly as at 17 October 2014.
iii) Whether "bad faith" was present looking at matters on 30 July 2021.
Admissibility of the Grounds of Appeal
Fifth Avenue's grounds of appeal raised points of law and issues of fact that had not been argued before Mr James. His lordship observed at [58] that an appeal from a hearing officer was a review and not a rehearing. He proposed to follow Mrs Justice Joanna Smith's approach to appeals against findings of specialist tribunals in para [24] of her judgment in Axogen v AVIV Scientific [2022] EWHC 95 (Ch). That case made clear that the court should give a good degree of respect to the hearing officer's findings of fact. He added that there was a spectrum of "respect" with primary findings of fact (such as, for example, a finding as to whether a document was a forgery or not) being accorded more respect than, for example, an evaluative finding which depends on an assessment of numerous factors (such as whether the application was tainted by bad faith).
Ground 1
Mr Justice Richards found that Mr James had not applied English partnership-at-will principles when construing the 1978 agreement or the 1984 variation. The context in which he discussed those principles was when he was considering the band members' relationship before 1978. It followed that Ground 1 failed.Ground 2
Shortly before the hearing, Fifth Avenue served a replacement skeleton argument which altered its grounds of appeal. The judge took the parties to agree that the central issue with Ground 2 was whether the hearing officer's conclusion that the 1984 letter was not a forgery, was perverse, outside the range of reasonable conclusions, or reached having taken irrelevant considerations into account or ignoring relevant considerations.
In oral submissions, Fifth Avenue's counsel confirmed that Ground 2 was concerned with the hearing officer's conclusions on bad faith. The applicant sought to argue that, (i) if Thomas McClary never validly left the partnership, even if he did leave the band, then (ii) he was still a member of the partnership at the time of its dissolution so that (iii) Alabama law might have given him some proprietary interest in the goodwill in the name "COMMODORES" on dissolution which (iv) might be relevant to whether the applicant was acting in bad faith in seeking to register that name as a trade mark. The judge pointed out that that analysis broke down at point (iii) as Fifth Avenue was not entitled to raise points of Alabama law in the appeal.
The judge further noted that clause 10.5 of the 1984 agreement provided as follows:
"Unless otherwise provided herein, upon dissolution and/or termination, The Partnership's asset shall be divided in accordance with the Uniform Partnership Act of the State of Alabama, in force at the date as of which this Amendment is executed, provided, however, that no value shall be assigned to the Group Name and no partner shall use the Group Name after dissolution without the written consent of all the other Partners."
He concluded at [68] that it was very difficult to see any continued role for Ground 2 in the appeal since it could say nothing about either the opponent's objection under s.3 (6) of the Act or its objection under s.5 (4) (a).
Mr Justice Richardson found no force in Fifth Avenue's challenge to the Hearing Officer's conclusion that the 1984 Letter was not a forgery. Moreover, Ground 2 could not alter the result since Mr James was entitled to conclude that Mr McClary's departure to pursue a solo career meant that he would leave the partnership anyway.
For all those reasons, Ground 2 was dismissed.
The judge further noted that clause 10.5 of the 1984 agreement provided as follows:
"Unless otherwise provided herein, upon dissolution and/or termination, The Partnership's asset shall be divided in accordance with the Uniform Partnership Act of the State of Alabama, in force at the date as of which this Amendment is executed, provided, however, that no value shall be assigned to the Group Name and no partner shall use the Group Name after dissolution without the written consent of all the other Partners."
He concluded at [68] that it was very difficult to see any continued role for Ground 2 in the appeal since it could say nothing about either the opponent's objection under s.3 (6) of the Act or its objection under s.5 (4) (a).
Mr Justice Richardson found no force in Fifth Avenue's challenge to the Hearing Officer's conclusion that the 1984 Letter was not a forgery. Moreover, Ground 2 could not alter the result since Mr James was entitled to conclude that Mr McClary's departure to pursue a solo career meant that he would leave the partnership anyway.
For all those reasons, Ground 2 was dismissed.
Ground 5
Fifth Avenue had criticised the hearing officer's decision in detail, straying well beyond the scope of an acceptable appeal. Instead of responding to that criticism, his lordship explained why Mr James was entitled to conclude that as at 17 Oct 2014, Commodore Entertainment owned sufficient goodwill in the name "COMMODORES" to mount a successful objection under s.5 (4) (a) of the Act. The judge noted that Fifth Avenue did not challenge Mr James's finding that Commodore Entertainment took over the band's music business from the partnership at some time before March 1984. Nor did it challenge Mr James's finding that the company used the COMMODORES name between March 1984 and 30 July 2021. On the hearing officer's findings, the partnership had, at the very least, acquiesced in
Commodore Entertainment carrying on a musical business under the name "COMMODORES" from 1984 onward.
In Mr Justice Richards's view, it was difficult to discern a basis on which Mr McClary could have owned goodwill himself to the exclusion of Commodore Entertainment. No evidence of Alabama law was advanced to substantiate that outcome. The hearing officer expressly considered relevant provisions of the 1978 Agreement and the 1984 Agreement dealing with the entitlement of partners to goodwill. He was quite entitled to conclude on the evidence before him that Mr McClary had not shown he was the owner of goodwill in the name "COMMODORES" to the exclusion of the opponent. Just as fundamentally, it was never explained how the rights claimed by Mr McClary were ever transmitted to the Fifth |Avenue.
It followed that the appeal on Ground 5 was dismissed.
Grounds 3 and 4
Fifth Avenue accepted that the hearing officer directed himself correctly on the law. Consequently, Grounds 3 and 4 were a straightforward challenge to the hearing officer's evaluative conclusions.
It first argued that Mr James's finding of bad faith was based on the assumption that Mr McClary and Fifth Avenue were trying to exclude Commodore Entertainment and the remaining band members from using the COMMODORES mark even though those persons had at least as much right to use it as Mr McClary and Fifth Avenue. The judge pointed out that this was a misreading of Mr James's decision. He had not accepted that Mr McClary or Fifth Avenue had any rights over the name "COMMODORES". His point at was that, even taking Fifth Avenue's case at its absolute highest, Mr McClary must have realised that the application sought to exclude Commodore Entertainment and Mr McClary's former partners from using the "COMMODORES" name in the UK in circumstances where (i) they had at least as much rights as him in the name, (ii) Fifth Avenue had been trading under that name from 1984 to 2014 and Mr McClary had not. Mr James had acknowledged that an application to register a mark where others have an interest in it will not necessarily amount to bad faith. Everything depended on intention and in this case there was evidence of bad faith.
There was also an argument that Mr James had applied the bad faith test to the wrong date. That turned out to be based on a typographical error.
For all these reasons, Mr Justice Richards rejected Grounds 3 and 4.
Conclusion
As Fifth Avenue's grounds of appeal had failed, the learned judge dismissed the appeal.
Comment
Because the appeal was based on procedural and evidential points, there was little discussion of earlier rights or bad faith in Mr Justice Richards's judgment. However, these were covered in detail by Mr James which is worth reading for that reason. Anyone wishing to discuss this case or oppositions to trade mark applications generally may call me on 020 7404 5252 during UK office hours or send me a message through my contact form at any time.
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