Surviving band member allowed to register HERMAN'S HERMITS
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In Frimp Ltd v Whitwam ( ATMO 5, January 19 2009), a hearing officer at the Australian Trademarks Office has allowed an individual member of a band to register the trademark HERMAN'S HERMITS despite an opposition by the company formed by all the members of the band.
The band Herman and the Hermits was formed in England in 1963 by Peter Noone, Keith Hopwood, Karl Green and two other musicians. In April 1964 the two other musicians were replaced by Jan Barry Whitwam and Derek Leckenby, and the name of the band was shortened to Herman's Hermits. The five members of the band then formed a company, Frimp Limited. The purpose of the company was to:
- act as an employer of the individual band members;
- enter into contracts; and
- receive royalties and other payments relating to performances and recordings of the band.
In 1971 Noone left the band. As a result of various other departures and deaths over the intervening years, Whitwam is the only member still performing as part of the Herman's Hermits band. However, Frimp continues to receive royalties and other payments on behalf of the other band members (or their estates).
Whitwam's application to register the HERMAN'S HERMITS mark in Classes 16 (printed matter) and 41 (entertainment services) of the Nice Classification was opposed on several grounds, the first being that Whitwam was not the owner of the trademark. In order to succeed under this ground of opposition, Frimp had to demonstrate that Whitwam was not the first user of the trademark in Australia.
It was not disputed that the Herman's Hermits band was the first user of the trademark in Australia, and that all band members were shareholders and directors of Frimp. The dispute arose over:
- whether the company was formed with the purpose of owning the trademark rights in the band; and
- if so, whether the company was the true owner of the trademark in Australia.
The hearing officer stated that although two members of the band had declared that the company was to own the trademark rights, this was not supported by other evidence (eg, articles or memorandum of association of the company).
The hearing officer also considered the fact that a 1975 dispute in the United Kingdom was settled by the parties: it was agreed that the continuing band members were entitled (jointly or severally) to describe themselves as Herman's Hermits. The hearing officer thus found that the band members had agreed that the individuals who continued in the band should be free to use the name. As Whitwam was the only surviving member continuing to perform in the band, he was the owner of the trademark.
The fact that Whitwam had registered the trademark in the United Kingdom and the European Union also demonstrated that Whitwam had "better grounds to assert ownership than the opponent". This ground of opposition thus failed.
Frimp also argued that use of the mark would be contrary to law, as it would breach several directors' duties under the Companies Act 1985, as well as several common law fiduciary duties of directors. The hearing officer held that a breach of a UK statute and common law would enable Frimp to succeed under this ground of opposition in Australia. However, he held that the registration of the trademark would not be a breach of Whitwam's statutory or fiduciary duties as a director of Frimp. This was because there was evidence that the individual members of the band "contemplated and approved of the concept of the band continuing to perform", and that this "approach was not inconsistent with the company's roles of collecting and distributing royalties".
As all the grounds of opposition failed, the hearing officer directed that Whitwam's application be registered.
The decision highlights the fact that bands (and similar entities) should ensure that they have put in place agreements concerning the ownership of IP rights, as this is the only way to ensure that the ownership of the intellectual property is not disputed or diluted at a later date.
Lisa Ritson and Melissa Preston, Blake Dawson, Sydney
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