Application for THRILLER LIVE held to be in bad faith

United Kingdom

In The Flying Music Company Ltd (THRILLER LIVE) (BL O-110-12, March 9 2012), a UK trademark application for THRILLER LIVE by the company behind the unauthorised musical of Michael Jackson’s life was found to be in bad faith. This was despite the hearing officer finding that the use of THRILLER by Michael Jackson and his successors was purely descriptive of his record-selling album.

The Flying Music Company Limited produces the unauthorised West End musical of Michael Jackson’s life, Thriller Live. On September 10 2008 Flying Music applied to register the expression 'Thriller Live' as a trademark for a number of goods and services in Classes 9 and 41 of the Nice Classification. These included “recordings of sounds and images in any media” in Class 9, and "theatrical and show business entertainments services” and “production of sound recordings, television programmes and films” in Class 41. 

Two oppositions were filed against the application on October 12 2009. The first opposition was filed by John Branca and John McCain as special administrators of the estate of Michael Jackson. The second opposition was filed by Triumph International Inc, the company to which Michael Jackson assigned any trademark rights he held in the word 'Thriller', the title of his album which has been acknowledged as the best-selling album of all time. The opponents challenged the application on three grounds:

  • THRILLER is a well-known mark subject to protection under Section 56 of the Trademarks Act 1994. Therefore, the application should be refused, as THRILLER constitutes an earlier trademark under Section 6(1)(c) of the act for the purposes of Sections 5(2)(b) and 5(3).
  • Use of the mark THRILLER LIVE was likely to mislead consumers as to the commercial origin of the goods and services covered by the application and would thus be contrary to the law of passing off. Therefore, it should be refused under Section 5(4)(a) of the act.
  • The application was made in bad faith, contrary to Section 3(6) of the act.

The oppositions were filed together to ensure that at least one of the opponents was entitled to claim trademark rights in THRILLER. As the oppositions were based on identical grounds, the proceedings were consolidated.

The hearing officer began by considering whether THRILLER is a well-known mark for the purposes of Section 56 of the act. There was no question that the album Thriller was well known, so protection depended on whether it could be said that the title Thriller was being used in a trademark sense. In rejecting the opponents’ assertions that this was the case, the hearing officer noted that the title of a work does not necessarily distinguish the commercial source of that work and THRILLER was never used to distinguish the commercial source of live performances. Without evidence that consumers treated the title 'Thriller' as a trademark, this ground was rejected.

The hearing officer then turned to the passing-off claim. He accepted that, at the date of the application, THRILLER was associated with certain recorded performances of Michael Jackson. However, the use of THRILLER LIVE did not misrepresent the commercial origin or authenticity and approval of the applicant’s goods or services, as THRILLER was not found to be distinctive of the commercial source of albums and videos.  Indeed, the hearing officer noted that it was uncommon for musical theatre shows taking the title of an artist’s famous song or album to be endorsed by the artist.

Finally, the hearing officer considered the objection under Section 3(6) of the act (that the application was made in bad faith). The hearing officer began by stating the conditions as set out in by the Court of Justice of the European Union in Lindt (Case C-529/07) for a finding of bad faith. It was clear that the applicant would have known that third parties had a commercial interest in the sale of recorded music and videos under the title Thriller. Consequently, the applicant should have realised that the application may result in the position that the owner of the rights in THRILLER would need a licence from the applicant to continue to exploit its rights. This would fall below the standards of commercial behaviour, resulting in a finding of bad faith in respect of all of the goods applied for in Class 9. The hearing officer however rejected the opponents' arguments in respect of “entertainment services in the form of musical theatre; providing theatre facilities; providing entertainments information; information relating to entertainment provided online from a computer database or the internet; publication of book, texts and journals online; ticket agency services”, as the opponents were unable to show an intention to provide such services or sufficient connection between these services and any commercial rights held by the opponents.

On the face of it, it may be difficult to reconcile the hearing officer’s finding that THRILLER was not used by the opponents in a trademark sense for the purposes of Section 56 of the act with the finding of bad faith under Section 3(6). The hearing officer’s findings were made in the absence of evidence from the applicant, as the applicant only filed written submissions. The hearing officer suggested that, had the applicant expressly taken the position that the opponents' uses of THRILLER did not establish trademark rights and explained how its use of THRILLER LIVE could be distinguished as trademark use, then a finding of bad faith could have been avoided. As this was not the case, establishing a prima facie case of bad faith was sufficient for the opponents to succeed.

Leigh Smith, McDermott Will & Emery UK LLP, London

Unlock unlimited access to all WTR content