Old musician's aspirations crumble before CTM onslaught

United Kingdom

In Powell v Turner ([2013] EWHC 3242 (IPEC), October 24 2013), Mr Recorder Douglas Campbell, sitting as an enterprise judge, has found that the Community trademark (CTM) WISHBONE ASH was valid and infringed.

Andy Powell had, since 1969, been a member of a large number of different band line-ups, each of which had traded as Wishbone Ash. Martin Turner had been a member of some of those line-ups, including those which spanned the band's most successful period (1969 to 1981). Beyond those golden days, Powell continued to play in a band of that name, whereas Turner played in a band called Martin Turner's Wishbone Ash.

Since March 2000 Powell had been the sole registered proprietor of the Community word mark WISHBONE ASH (CTM No 742684), which he had applied for on February 9 1998 for goods and services in Classes 9, 16, 25 and 41 of the Nice Classification. He brought proceedings against Turner, seeking relief for, among other things, infringement of the trademark in respect of:

  • Turner's use of 'Martin Turner's Wishbone Ash' as the name of his band, which provided live and recorded musical performances; and
  • Turner's use of the domain name ‘www.wishboneash.co.uk’.

Turner counterclaimed for revocation of Powell's CTM on the ground that it was applied for in bad faith contrary to Article 52(1)(b) of the Community Trademark Regulation (207/2009). He also sought an account of a share of the profits made by Powell in the six years leading up to the date of service of the counterclaim, to the extent that such profit was attributable to Powell's use of Turner'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 its valuation.

Mr Recorder Campbell ruled in favour of Powell. In his view:

  • There was no evidence to support the assertion that Powell's application had been made in bad faith. On the facts, he was the sole owner of the goodwill in the name Wishbone Ash on the date he applied to register it.
  • Neither 'Martin Turner's Wishbone Ash' nor the domain name ‘wishboneash.co.uk’ were identical to the trademark as registered. They were however similar, which then raised the questions of whether there was any likelihood of confusion and whether there had been a taking of an unfair advantage of the reputation in the name Wishbone Ash without due cause.
  • The use of 'Martin Turner's Wishbone Ash' involved a clear likelihood of confusion with the registered mark, especially since that sign was not just similar, but highly similar, to the mark as registered. Turner had also used the name Martin Turner's Wishbone Ash and the domain name without due cause. There was no reason why the use of the domain name as part of web pages dealing with the band's historical background should cause any type of injury to Powell's CTM - but use of the name for marketing Turner's band was a very different issue.
  • The use of the domain name in the course of normal advertising also infringed Powell's CTM.
  • There was no basis for ordering an account of profits in Turner's favour or for holding Powell's CTM to be invalid.

With prudent foresight and good professional advice at the outset, the need for litigation of this nature can be avoided.

Jeremy Phillips, IP consultant to Olswang LLP, London

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