Claimant bringing proceedings against defendant for infringement of its community trademark in respect of defendant’s use of ‘Martin Turner’s Wishbone Ash’ as name of band and his use of domain name

Powell v Turner: Intellectual Property Enterprise Court: 24 October 2013

The claimant had, since 1969, been a member of a large number of different band line-ups, which had all traded as ‘Wishbone Ash’. The defendant had been a member of some of those lineups, including those which spanned the band’s most successful period of 1969 to 1981. The claimant continued to play in a band of that name, whereas the defendant played in a band called ‘Martin Turner’s Wishbone Ash’.

The claimant was the sole registered proprietor of Community Trade Mark No 742684 (the words ‘WISHBONE ASH’) (the trademark), which he had applied for on 9 February 1998 and registered on 16 March 2000 in respect of classes 9, 16, 25 and 41. The claimant brought proceedings seeking relief for, among other things, infringement of the trademark in respect of: (i) the defendant’s use of ‘Martin Turner’s Wishbone Ash’ as the name of his band, which provided live and recorded musical performances, and (ii) the defendant’s use of a domain name The defendant counterclaimed for revocation of the claimant’s trademark on the ground that the trademark was applied for in bad faith contrary to article 52(1)(b) of Council Regulation (EC) 207/2009 (on the Community trademark) (the Regulation).

The defendant sought an account of such share of the profits made by the claimant in the six years prior to the date of service of the counterclaim as was attributable to the use by the claimant of the defendant’s share of the goodwill attaching to the Wishbone Ash name generated by the first Wishbone Ash, or to interest at 5% per annum on such share following the valuation thereof.

The claimant submitted that there had been infringement pursuant to each of article 9(1)(a), 9(1)(b) and 9(1)(c) of the Regulation. The defendant denied infringement on the ground that neither of the signs complained of was identical to the claimant’s registered trade mark (as required under article 9(1)(a) of the Regulation). The defendant denied that his use of ‘Martin Turner’s Wishbone Ash’ resulted in a likelihood of confusion. He further submitted that: (i) the website associated with the domain name was a source of honest and accurate information about the defendant’s band, and as such not liable to affect any function of the trademark within the scope of article 9 of the Regulation; and (ii) that it was, in any event, honest descriptive use which was permitted by article 12(b) of the Regulation.

In relation to article 9(1)(c), the defendant denied any detriment to the distinctive character and/or repute of the trademark. Consideration was given to: (i) whether the claimant’s application for the Community trade mark registration had been made in bad faith; (ii) whether the defendant had used, in the course of trade, a sign which was identical with or similar to WISHBONE ASH; (iii) whether there existed, because of use by the defendant of a sign or signs similar to WISHBONE ASH, a likelihood of confusion on the part of the public; (iv) whether the defendant’s use of his sign taken unfair advantage of, or been detrimental to, the distinctive character or repute of WISHBONE ASH; and (v) whether the claimant was liable to account to the defendant for use made by him of goodwill attaching to the name WISHBONE ASH.

The court ruled: (1) On the evidence, the application had not been made in bad faith. On the facts, the sole owner of the goodwill in the name Wishbone Ash, as at the relevant date, had been the claimant (see [83], [101] of the judgment).

(2) It was settled law that a mark was ‘identical’ to a registered mark where it reproduced all the constituent parts of the registered mark without any alterations or additions and where any differences were so slight as to be imperceptible to the average consumer (see [104] of the judgment).

Applying settled law, neither ‘Martin Turner’s Wishbone Ash’ nor the domain name was identical to the trademark as registered (see [105] of the judgment).

LTJ Diffusion SA v Sadas Vertbaudet SA: C-291/00 [2003] All ER (D) 297 (Mar) adopted.

(3) In respect of infringement under article 9 of the Regulation, it was settled law that the question was whether there was a likelihood of confusion on the part of the public, not whether there was actual confusion (see [107], [108] of the judgment).

Applying settled law, the use of ‘Martin Turner’s Wishbone Ash’ had involved a clear likelihood of confusion with the registered mark. The sign was not just similar but highly similar to the mark as registered. The use of the domain name in normal advertising also infringed. The defendant’s use of Martin Turner’s Wishbone Ash had been without due cause, as was the use of the domain name to market his band. There was no reason why the use of the domain name as part of web pages dealing with historical background of the band should cause any type of injury to the claimant’s mark and, in any event the defendant’s previous historical involvement in the band would amount to due cause for that type of use. The defendant’s application for an account would be refused (see [119], [120], [132], [134] of the judgment).

L’Oreal SA v Bellure NV: C-487/07 [2010] All ER (EC) 28 adopted.

(4) The defendant’s attack on the validity of the trademark, and his claim for an account would be dismissed. The claimant’s trade mark was valid and had been infringed by the defendant pursuant to each of article 9(1)(b) and 9(1)(c) of the Regulation (see [135] of the judgment).

Interflora Inc v Marks and Spencer plc [2013] All ER (D) 238 (May) applied; Aveda Corporation v Dabur India Ltd [2013] All ER (D) 172 (Mar) applied.

Philip Harris (instructed by Walker Morris LLP) for the claimant; Madeleine Heal (instructed by Mishcon de Reya) for the defendant.