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Friday, 8 June 2007

Foley says relax

The IPKat brings news of a decision of the Trade Mark Registry.

Thatcher's children will be familiar with the band Frankie Goes to Hollywood. The band had a number of chart hits. The lead singer was Holly Johnson, although the band also had (at various times) four other members. Johnson left to pursue a solo career in 1987, upon which the band ceased performing. However, they reformed, minus Johnson and with a new lead vocalist, for the 'Bands Reunited' TV programme in 2003.

In April 2004, Johnson applied to register FRANKIE GOES TO HOLLYWOOD as a trade mark in various classes. The remaining band members opposed the application, citing an earlier right protected by passing off and bad faith.

Mr Hearing Officer Foley allowed the opposition on both grounds.

The key issue for s.5(4) (passing off) was whether the goodwill gravitated to Johnson alone, as the lead singer, or whether it could be attributed to the band as a whole. It was irrelevant that Johnson had thought of the name, and it was likewise irrelevant that it was somewhat creative. The legal arrangements in force meant that, at the time Johnson left the band, it existed as a partnership at will, meaning that any goodwill attached to the partnership, rather than its individual members.

The fact that the band was asked to reform for 'Bands Reunited' meant that any goodwill in the original band survived until 2003, and was bolstered by rereleases etc and the fact that legal action had been taken against others trying to use similar names during that period. However, this goodwill would not have accrued to the reformed band. This residual goodwill resided in the partnership, rather than the individual band members, and therefore Holly Johnson's attempt to register the mark on his own amounted to a misrepresentaiton that would lead to passing off.

Johnson had also acted in bad faith. He applied to register the application without the knowleged of the other band members and to monopolise the name in a way that would stop them from using it. It was irrelevant that he believed that he owned the name, and so thought he was acting acceptably.

The IPKat wonders whether the position would be the same in a situation where the band was known by the name of the lead singer, such as Cliff Richard & The Shadows. An argument could be made for saying that the lead singer wouldn't acquire any of the goodwill of the band name (as opposed to his own) since his name would be clearly separated from that of the band.

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