Goodwill and reputation found to exist in name of 1960s band

United Kingdom

In Burdon v Steel (Case O-369-13, September 9 2013), the appointed person has allowed an appeal against a 2008 decision of the hearing officer.

The appellant, Eric Burdon, was the lead singer of The Animals pop group in the 1960s and the vocalist in that group's major hit, “The House of the Rising Sun”. He appealed against the rejection of his opposition to the registration by the group's former drummer, John Steel, of the words ‘The Animals’ as a trademark for use in relation to CDs and musical recordings in Class 9, and musical live performances in Class 41 of the Nice Classification.

The group, like many in the 1960s, was in legal terms an incorporated association of individuals; no contractual or other arrangements governed the relationship between its members, and there had never been a realisation or division of the group's assets on its dissolution. The original members occasionally reunited to tour or make recordings, their last collaboration being in 1983. In 2001 the group was inducted into Hollywood's RockWalk hall of fame. In a public poll, the group's recording of "The House of the Rising Sun" was voted 14th all-time-favourite single for the purposes of a television programme broadcast in 2001 and 2003. In 2004 John Steel applied to register the words ‘The Animals’ as a trademark. Burdon opposed under the Trademarks Act 1994, Section 5(4)(a), on the basis that, if Steel were to use the mark, Burdon could sue him for passing off.

In 2008 the hearing officer found that the goodwill accrued by the group between 1963 and 1966 had long dissipated by the date of Steel's application, despite the minor top-ups provided by half-hearted reunions, re-releases of the same song, and the band’s induction into a US museum. He concluded that, since no goodwill existed in the mark in 2004, the ground of opposition under Section 5(4)(a) failed. Burdon then appealed, arguing that the hearing office had erred in proceeding on the mistaken basis that no goodwill existed in the mark THE ANIMALS at the date of Steel's application.

Geoffrey Hobbs QC, in his capacity as an appointed person, allowed the appeal. In his view:

  • The fact that The Animals had stopped producing new materials and performing together did not necessarily mean that there had been a cessation of business capable of sustaining goodwill, still less a destruction of the existing goodwill.
  • On the evidence, there was both goodwill and reputation in the name of the group, which accrued to those of its members of the group who last performed together in 1983; it was they who were entitled to control the use of the name The Animals in relation to live and recorded performances. That goodwill had not devolved or dissipated over the period from 1983 to 2004.
  • Steel's use of the name The Animals was likely to give rise to the mistaken belief that any band performing under that name was the full successor in title to the business of the group originally called by that name. Such misrepresentation was liable to damage the economic value of the goodwill and reputation of the business signified by the name The Animals. It was thus open to Burdon, as one of the members of the group at its last performance in 1983, to invoke the law of passing off for the protection of the goodwill and reputation to which the group members were collectively entitled. 
  • The fact that Steel, who also performed with the group in 1983, was one of the "last men standing", did not enable him to lay claim individually to the whole of the benefit of their goodwill and reputation by registering ‘The Animals’ as his trademark.

Arguably, this is just another of those sad cases in which the remnants of a long-dead group are raking over the rubble of their assets in the hope of finding something worth preserving, then wasting their time and effort in trying to stop each other monopolising it. With just a little foresight and a sensible attitude towards managing a group's future and the long tail in its days of decline, this sort of unseemly scrap can be avoided.

Jeremy Phillips, IP consultant to Olswang LLP, London

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