Trade Marks and a Band’s Name
A Trade Mark (P.M.) offers protection for the owner and the consumer. The Coke Cola, trademark protects the investment the company has made in the drink by stopping anyone else from calling their drink Coca Cola and thus profiting of that investment. The Trade Mark also protects the public from being conned into buying a drink called Coca Cola when it isn’t the real thing.
Successfully registering a trademark isn’t the result of a rigorous examination by the Intellectual Patent Office. (IPO) When you apply to register a Trade Mark, The IPO publish the application in a specialised publication of very limited circulation and it also contacts anyone with a similar Trade Mark for their opinion.
You can freely search here to see if a Trade Mark has been registered. You will see that “Dexys Midnight Runners” isn’t a register TM. I could attempt to register it and unless the examiner was a Dexys fan, it would most likely pass the publication and objection test and be registered to me!
“A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842)).
This would put me at financial risk, because the real “Dexys Midnight Runners” could sue me for any financial loss and costs. People who buy tickets could demand a refund. If the IPO make a mistake with issuing of a Trade Make, it doesn’t protect the owner of the Trade Mark from being sued for breach of contract.
As originally explained the name of a Band belongs to the members that made it famous. Consequently only the original members of the band are legally entitled to register a Trade Mark and the application has to be by all the original members. If two members of a band have retired, the remaining, performing members can’t register the TM in just their names. Perhaps this explains why so few bands have registered their name.
As Trade Marks are very inexpensive and the IPO doesn’t seem to be as through as they are with Patents, there have been a a lot Court cases to define the general rules surrounding Trade Marks and Pop Bands. The two most notable are
SAXON 12 Nov 2002 (This case took 2 years from the original application)
Graham Oliver, Steven Dawson and Peter ‘Biff’ Byford were all founder members of Saxon which was formed in the 1970s. Steven Dawson left the band in 1985. Graham Oliver left in 1995. Biff Byford continued as a member throughout its various manifestations. Subsequently Steven Dawson and Graham Oliver played in other heavy metal bands using a variety of names which included one or both of their names as well as the word ‘Saxon’. Both appeared to accept that they could not perform under the name ‘Saxon’ by itself.
In 1999 Graham Oliver and Steven Dawson registered ‘Saxon’ as a trade mark. They then maintained that they had exclusive rights in the name and tried to prevent Biff Byford from using the name.
Biff Byford applied to the Trade Mark Registry to have the trade mark declared invalid. He applied on the basis ‘passing off’, that is an action to stop others misrepresenting themselves as Saxon.
Surprisingly he failed. The Registrar took the view that the goodwill of the band and the rights in the name were owned by the individual members of the band. As each member left he retained those rights. The Registrar said that Biff Byford had as much right to register ‘Saxon’ as a trade mark as Steven Dawson and Graham Oliver but they had simply ‘got there first’.
Biff Byford appealed to the High Court. There Mr Justice Laddie made short work of the Registrar’s decision and declared that the trade mark registration was invalid.
It was accepted that, like most bands, Saxon was a partnership at will, that is a partnership for as long as all the partners wanted to stay together. The judge took the view that the name and the goodwill attached to it were assets not of the individual partners but ‘of the partnership’. This is not to say that a partnership is a legal entity separate from the partners themselves like a limited company, but that the partners own the assets for their joint benefit.
The judge said that when Steven Dawson left the band in 1985 that partnership dissolved. He had no right to use the partnership’s assets on his own. He could have asked for a realisation and division of the partnership assets. He did not do so. It was clear from his subsequent conduct that he abandoned his interest in the goodwill and the Saxon name.
Graham Oliver’s position was less clear but the judge decided that having asserted no claim for three years he had also abandoned his interest in the name and goodwill.
It followed that it was Biff Byford and the current members of the band who owned the name and the fresh goodwill which they had generated themselves and were therefore in a position to prevent Graham Oliver and Steven Dawson passing themselves off as Saxon.
The judge also found that the application was made in bad faith. Graham Oliver and Steven Dawson said that they had obtained the trade mark registration for the benefit of all the original members of the group. The fact was that they had applied in their own names only.
In establishing the principle that the name and goodwill of a partnership are owned ‘by the partnership’ and not the individual partners the judge effectively changed the law as previously understood. The commonly held view had been that on the expiry of a partnership, unless there was agreement to the contrary, each partner was entitled to a share of the goodwill and thus to carry on doing business under the name.
If the name can only be used by all the partners together, when the partnership dissolves no-
John Steel, the former drummer of the 1960s band “The Animals”, has been refused the right to register the band name as a UK trade mark.
The band first formed in 1963, broke up in 1966 and regrouped on a number of occasions between 1968–1983 for charity events, touring and some albums. Since the split of the band John Steel had set up two new bands, Animals II and Animals and Friends. In addition Eric Burdon (the former lead singer) also continued his musical career under the band name Eric Burdon and The Animals.
In 2004 John Steel applied for the UK trade mark “The Animals” The application was opposed by Eric Burdon. In the original decision, the hearing officer ruled that John Steel was permitted to register the trade mark, despite opposition from Eric Burdon. Within these proceedings John Steel claimed to be the exclusive right owner of this IP and, therefore, was able to enjoy the goodwill and reputation of the band name. The decision was appealed.
On appeal the appointed person ruled that, although John Steel was one of the original band members, this did not entitle him to claim the entire goodwill and reputation of the “The Animals” brand. As such, relevant authorization and consent is required from the remaining right holders in order for John Steel to register the trade mark. The original decision was therefore overturned and the opposition was upheld.
Cupids Inspiration’s Trade Mark Problems.
There two bands claiming to be Cupids Inspiration.
One contain the original drummer, Roger Gray
The other contains Terry Rice Milton the original Singer and Laughton James on Bass Guitar.
As the original 1968 band doesn't exist anymore in its entirety, its not possible to see the hit band Cupids Inspiration. Either band or for that matter, anyone can call themselves Cupids Inspiration, that in it self isn’t illegal or actionable, as long as each band makes it clear to their audiences, before they buy a ticket who will be performing, which if any of the band members are from the original 1968 band. You have to get what you pay for!
Paul Shanahan, Robert Poole, Paul Thomas, are performing under name “Cupids Inspiration” although none of them are on the original recordings, registered it as a Trade Mark on the 23 May 2013. That isn’t the IPO confirming they are “Cupids Inspiration” That’s the IPO are confirming no one has objected to the TM at the time of registration. Not the same thing!
When Terry Rice-
If does get cancelled, this doesn’t stop either or both bands continuing as Cupids Inspiration, but, like any band that isn’t 100% original, they should just be clear about who are the original members, other wise in my opinion, legal action by someone is inevitable
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