Keep the Faith, kill the trade mark application: you can't monopolise Northern Soul

"Northern Soul" is not everyone's favourite type of music. Indeed, many ardent music fans may not have experienced its delight at all. There is however a dedicated following for it, consisting of people who express their loyalty by purchasing memorabilia and buying handbags, or so it seems. Here's a guest post from Katfriend Shalini Bengani to explain all about it:

Retro Bag Shop’s application; opposition by Brian Poulton (Case 0/358/14) was decided last month by Hearing Officer Oliver Morris in the UK Intellectual Property Office. It sheds some fascinating light on Northern Soul music, about which more can be learnt through this BBC2 Culture show documentary link as well as the Northern Soul fans’ Facebook page. 

This case plays out between the Retro Bag Shop and Mr Brian Poulton (part owner of Indie Apparel Limited which trades on eBay as Atom Retro) regarding an application to register a figurative trade mark with the text NORTHERN SOUL KEEP THE FAITH (depicted here), filed on 27 December 2012 for Class 18 goods: imitations of leather, travelling bags, handbags, rucksacks, purses, wallets; flight and shoulder bags. 

Poulton’s opposition is based on absolute grounds of refusal under section 3(1)(d) of the Trade Mark Act 1994, on the basis that it was a trade mark that consisted exclusively of “signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”.  Said Poulton, the term “Northern Soul” was descriptive of a musical genre: it has been in general use since the 1960/70s in reference to “mod” culture and the music scene in the North of England. He added that the clenched fist emanated from the “Black Power” movement of that period and that the mark has been in common usage on bags, badges and clothing for the past 40 years. This being so, the logo should be free for all traders, clubs and societies to use as they wish and should not be expropriated by Retro Bag Shop. 

Poulton, a music and fashion enthusiast, testified that the mod scene became influenced by soul music, leading to Northern Soul -- which was particularly popular in the North of England. This genre of music went beyond mere listening to it.  Said Poulton, Northern Soul events take place, often in clubs; he and others would take along flight or bowling bags and that these bags, along with their scooters, would be adorned with patches and other memorabilia. The use of patches on clothing was to denote the genre and their use seems to be a common practice adopted by fans of Northern Soul. 

What about the logo? Said Poulton, it came to prominence in the 70s and was used on posters advertising events, being worn by attendees as a badge of allegiance. Since that logo had been used on a wide range of goods over the past 40 years, he explained, these being primarily badges, t-shirts and bags, the logo was incapable of functioning as a trade mark. The device had a great meaning to many thousands of enthusiasts and Retro should not be given exclusive rights in it. Poulton’s case was corroborated by the evidence of Mark Kelson who ran an eBay shop for 60s, 70s, mod and Northern Soul memorabilia. Said Kelson, “keep the faith” was something the fans of Northern Soul used to say to each other.  Richard Free, a director of wholesale and retail trader The Vintage Clothing Company (“TVCC”), testified that when TVCC initially began to sell goods bearing the logo in or around 2003, the scene was somewhat sleepy --  but it was growing again following the release of a TV documentary and a major film. Free’s view was that the device and slogan are owned by the people who have been involved with Northern Soul, not a bag manufacturer that has latched on to the idea. 

Faced with this evidence, Oliver Morris concluded that there was clearly a cornucopia of businesses selling bags bearing that logo (or close variations on it) before Retro’s filing date. On Retro's own evidence, between 2006 and 2012 some £80,000 worth of bags bearing the mark were sold to TVCC; the fact that Retro (or its predecessors) may have made many of those bags was irrelevant since the manufacturing of goods which found their way to market via a number of different traders would appear to be Northern Soul memorabilia –those traders must have viewed that mark solely as a generic badge of allegiance to the Northern Soul movement.  The witnesses giving evidence in support of Poulton’s opposition seemed typical of the section of the relevant public concerned with the trade in products bearing these sorts of signs, because of their interest in the genre, and they appeared to view the sign as part of their common “language”. Moreover, use of the sign on t-shirts demonstrated that the Northern Soul movement inspired loyalty.  While this is not directly relevant, it is indirectly relevant because it helps to understand how the relevant public would have regarded the use of the mark on bags at the relevant date. 

While concluding, the Hearing Officer reiterated that the objective of the ground for refusal under Section 3(1)(d) was to prevent registration of signs which cannot perform the essential distinguishing function on account of them being part of the common language or used in trade and based on this assessment this opposition succeeded. 

We trust that this decision will placate the Soulies …

More on Northern Soul here

More on Mods here