Factual and Procedural Background
The Plaintiff has been a member of various line-ups trading under the band name "Wishbone Ash" since 1969. The Defendant was a member of some of these line-ups, including the band's most successful period from 1969 to 1981. Currently, the Plaintiff continues to perform under the name "Wishbone Ash," while the Defendant performs under "Martin Turner's Wishbone Ash."
The Plaintiff is the sole registered proprietor of Community Trade Mark No. 742684 for the words "WISHBONE ASH," registered in respect of multiple classes including entertainment services by a musical group. The Plaintiff issued a claim on 25 May 2012 alleging trade mark infringement and passing off, though the passing off claim was later dropped.
The infringement claim concerns the Defendant's use of "Martin Turner's Wishbone Ash" as a band name and the domain name www.wishboneash.co.uk. The Plaintiff alleges infringement under Articles 9(1)(a), 9(1)(b), and 9(1)(c) of the Community Trade Mark Regulation (CTMR). The Defendant denies infringement, arguing the signs are not identical, that the qualifier "Martin Turner's" dispels confusion, and that use of the domain name is honest descriptive use or does not affect the trade mark's function.
The Defendant counterclaims for revocation of the Plaintiff's trade mark on grounds of bad faith, alleging that the Plaintiff applied for the trade mark solely to obtain exclusive rights without a reasonable belief in entitlement. The Defendant also seeks an account of profits attributable to goodwill generated by the Defendant's share in the band name.
The dispute does not involve copyright issues; the Defendant continues to receive royalties for original songs. The trial was held over two days in September 2013, focusing primarily on the bad faith issue, with infringement issues relating mainly to the use of the band name rather than the domain name.
The court heard extensive witness evidence from both parties, including band members, agents, promoters, and trade mark attorneys. The court found all witnesses sincere but gave no weight to opinions on legal matters expressed by witnesses.
Legal Issues Presented
- Was the Plaintiff's application for Community Trade Mark registration made in bad faith?
- Has the Defendant used, in the course of trade, a sign identical with or similar to "WISHBONE ASH"?
- Is there a likelihood of confusion among the public due to the Defendant's use of similar signs?
- Does "WISHBONE ASH" have a reputation within the Community?
- Has the Defendant's use taken unfair advantage of, or been detrimental to, the distinctive character or repute of "WISHBONE ASH"?
- Is the Plaintiff liable to account to the Defendant for use of goodwill attaching to the name "WISHBONE ASH"?
Arguments of the Parties
Plaintiff's Arguments
- The Plaintiff contends he was the sole owner of the goodwill in the band name by 1998 and acted in good faith in applying for the trade mark to protect the band's name from third parties.
- The Plaintiff denies the Defendant's use of "Martin Turner's Wishbone Ash" and the domain name infringes the registered trade mark, pointing to actual confusion among consumers despite the qualifier.
- The Plaintiff rejects claims that the Defendant's band is of lesser quality or that the use tarnishes the mark, but asserts the Defendant's use causes dilution and free-riding on the trade mark's reputation.
- The Plaintiff opposes the Defendant's counterclaim for an account of profits, arguing it is barred by acquiescence and that the Plaintiff is sole owner of the goodwill.
Defendant's Arguments
- The Defendant denies infringement, arguing that the signs used are not identical and that the qualifier "Martin Turner's" prevents likelihood of confusion.
- The Defendant claims the use of the domain name is honest descriptive use and does not affect the trade mark's function.
- The Defendant alleges the Plaintiff’s trade mark registration was made in bad faith, without reasonable entitlement, intending to exclude other original band members.
- The Defendant seeks revocation of the Plaintiff’s trade mark and an account of profits for use of goodwill attached to the band name.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Frost Products v F C Frost Limited [2013] EWPCC 34 |
Definition and elements of bad faith in trade mark applications under CTMR. |
Guided the court's understanding of bad faith, emphasizing dishonest intention and lack of honest intention. |
| Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH (C-529/07) [2009] ETMR 56 |
Factors to consider in determining bad faith in trade mark registration. |
Considered alongside Frost Products to frame bad faith analysis. |
| Malaysia Dairies Industries [2013] ETMR 36 |
Requirement to consider all relevant factors specific to the case at the time of trade mark application. |
Supported the approach to bad faith requiring contextual and temporal analysis. |
| Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd [2010] RPC 16 |
Application of bad faith principles in trade mark registration. |
Referenced to illustrate circumstances where bad faith was not found. |
| Red Bull v Sun Mark [2012] EWHC |
Standard of proof and seriousness of bad faith allegations. |
Emphasized the need for cogent evidence on balance of probabilities. |
| Byford v Oliver [2003] FSR 39 |
Ownership of goodwill in a band name and implications for trade mark rights. |
Formed the basis for analysis of ownership of goodwill in the band name among band members and partnerships. |
| Gill v Frankie Goes to Hollywood Ltd [2008] ETMR 4 |
Application of Byford v Oliver principles in trade mark opposition involving band names. |
Confirmed approach to ownership and bad faith in band name trade mark disputes. |
| Williams and Williams v Canaries Seaschool SLU [2010] RPC 32 |
Concept of "last man standing" becoming entitled to goodwill in unincorporated associations. |
Considered but distinguished due to differences in band structure. |
| Burdon v Steel O-369-13 |
Ownership and registration of band name trade marks post-split. |
Referenced to address "last man standing" arguments and collective goodwill. |
| Habib Bank Limited v Habib Bank AG Zurich [1982] RPC 1 |
Principles of acquiescence in trade mark disputes. |
Applied to reject Defendant's claim based on delay and acquiescence. |
| LTJ Diffusion SA v Sadas Vertbaudet SA (C-291/00) [2003] ECR I-2799 |
Definition of identical marks for infringement purposes. |
Used to find that Defendant's signs were not identical but similar to the registered mark. |
| Interflora v Marks & Spencer plc [2013] EWHC 1291 (Ch) |
Likelihood of confusion and unfair advantage/detriment in trade mark infringement. |
Applied to assess likelihood of confusion and unfair advantage/detriment from Defendant's use. |
| Aveda Corp v Dabur India [2013] EWHC 589 (Ch) |
Likelihood of confusion standard. |
Supported the court's approach to assessing likelihood of confusion. |
| L'Oreal v Bellure [2009] ECR I-5185 |
Types of injury to trade mark rights: dilution, tarnishing, and free-riding. |
Guided analysis of injury to the distinctive character or repute of the mark. |
| Wolf Head (T-570/10) |
Clarification on evidence required for detriment to distinctive character (dilution). |
Considered in relation to detriment to the distinctive character of the mark. |
| B Sky B v Microsoft [2013] EWHC 1826 (Ch) |
Interpretation of dilution and detriment to distinctive character. |
Supported findings on dilution without need for economic behavior change evidence. |
Court's Reasoning and Analysis
The court first addressed the allegation of bad faith in the Plaintiff's trade mark application. Applying established principles from relevant case law, the court considered factors such as the Plaintiff's intention, knowledge of third party use, and the reputation of the mark at the time of application. The court found the Plaintiff honestly and reasonably believed he was entitled to the goodwill in the band name, given that by 1998 he was the sole remaining active member performing under that name and that other original members were not using or asserting rights in the name. The court accepted the Plaintiff's application was a reasonable commercial step to protect against third-party use and was not made with a dishonest or unfair motive.
Regarding ownership of goodwill, the court reviewed the complex history of the band and its incarnations, partnerships, and limited companies. It found that goodwill passed from the original line-ups to subsequent ones, but dissolved partnerships had effectively acquiesced in the Plaintiff's sole ownership by 1998. The court rejected arguments that goodwill was owned by dissolved partnerships or limited companies, concluding the Plaintiff was the sole owner of goodwill in the name at the relevant time.
On infringement, the court found that neither the Defendant's band name "Martin Turner's Wishbone Ash" nor the domain name was identical to the registered trade mark, but both were highly similar. The court found a likelihood of confusion existed, supported by evidence of actual confusion including ticket sales impact and consumer inquiries. The qualifier "Martin Turner's" was insufficient to dispel confusion, as it was often omitted by third parties.
The court found the Defendant's use caused detriment to the distinctive character of the Plaintiff's mark (dilution) and allowed the Defendant to gain unfair advantage (free-riding). It rejected claims of tarnishment due to unsubstantiated allegations of lesser musical quality. The court found no due cause for the Defendant's use of the name and domain to promote his band, though historical use of the domain for factual information was acceptable.
Finally, the court refused the Defendant's claim for an account of profits, finding it barred by acquiescence, that the Plaintiff was sole owner of goodwill, and that the Defendant was the wrong party to bring such a claim.
Holding and Implications
The court's final decision was to dismiss the Defendant's attack on the validity of the Plaintiff's Community Trade Mark and the claim for an account of profits. It found that the Plaintiff's trade mark is valid and that the Defendant infringed it pursuant to Articles 9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation.
The direct effect is that the Plaintiff retains exclusive rights to the trade mark "WISHBONE ASH" and the Defendant's use of "Martin Turner's Wishbone Ash" and the domain name in relation to musical performances infringes those rights. The Defendant's counterclaims fail. No broader precedent was established beyond the application of existing principles to the facts.