Powell v Turner [2013] EWHC 3242 (IPEC)

Case No CC12P02133

[2013] EWHC 3242 (IPEC)

IN THE high court of justice

chancery division

intellectual property enterprise COURT

Venue Rolls Building,, 110 Fetter Lane,

Date 24 th October 2013

London

EC4A 1NL

Before

Mr Recorder Douglas Campbell

Sitting as an Enterprise Judge

Between

Andrew powellClaimant

Martin Robert turnerDefendant

Philip Harris (instructed by Walker Morris LLP) for Claimant

Madeleine Heal (instructed by Mishcon de Reya) for Defendants

JUDGMENT

Mr Recorder Douglas Campbell:

Introduction

[1]The Claimant has since 1969 been a member of a large number of different band line-ups which have all traded as “Wishbone Ash”. The Defendant has been a member of some of these lineups, including those which span the band’s most successful period of 1969 to 1981. The status quo is that the Claimant continues to play in a band of that name today, whereas the Defendant plays in a band called Martin Turner’s Wishbone Ash.

[2]The Claimant is the sole registered proprietor of Community Trade Mark No. 742684 (the words “WISHBONE ASH”). The mark was applied for on 9th February 1998 and registered on 16th March 2000. It is registered in respect of classes 9, 16, 25, and 41. The class 41 part of the registration states as follows:

“Entertainment services provided by a musical group; musical entertainment services; sound recording and video entertainment services; concert, musical and video performances; television and radio entertainment services; entertainment services by stage production and cabaret; production of video and/or sound recordings; presentation, production and performance of shows, musical shows, concerts, videos and radio and television programmes; recording, film, video and television studio services; audio, film, video and television recording services; publishing; music publishing; television and radio broadcasting; sound recording, film and video production and distribution services; all the aforesaid services not relating to entertainment for children, nor to education of children, nor to a television series for children.”

[3]The Claimant issued the claim form in these proceedings on 25th May 2012. At that stage the Claimant sought relief for infringement of the Community Trade Mark and for passing off. The claim for passing off was dropped on 18th December 2012.

[4]The trade mark infringement claim relates in particular to(1) the Defendant’s use of “Martin Turner’s Wishbone Ash” as the name of his band which provides live and recorded musical performances, and

(2) the Defendant’s use of the domain name www.wishboneash.co.uk. The Claimant alleges infringement pursuant to each of Articles 9(1)(a), 9(1)(b), and 9(1)(c) of Council Regulation (EC) No. 207/2009 (the Community Trade Mark Regulation, or CTMR).

[5]The Defendant denies infringement on various grounds. He points out that neither of the signs complained of is identical to the Claimant’s registered trade mark (as is required under Art 9(1)(a)). So far as “Martin Turner’s Wishbone Ash” is concerned, he relies on the qualifier “Martin Turner’s” as dispelling likelihood of confusion. So far as the domain name is concerned he says that the website associated with the Defendant’s domain name is a source of honest and accurate information about the Defendant’s band, and as such not liable to affect any function of the trade mark within the scope of Art 9 CTMR; and that it is in any event honest descriptive use which is permitted by Art 12(b) CTMR. In relation to Art 9(1)(c), he also denies any detriment to the distinctive character and/or repute of the trade mark.

[6]The Defendant also counterclaims for revocation of the Claimant’s Community Trade Mark, but only upon the ground that the mark was applied for in bad faith contrary to Art 52(1)(b) CTMR. In particular the Defendant alleges that the Claimant was dishonest or otherwise fell short of the standards of acceptable commercial behaviour, in that when he filed the application for his Community Trade Mark in his sole name his purpose was to obtain and benefit from exclusive rights in the name Wishbone Ash without any reasonable belief that he was properly entitled to the same.

[7]The Defendant does not allege that the mark is invalid by reason of earlier unregistered rights pursuant to Arts 8(4) and 53(1)(c) CTMR, nor is there any claim (however formulated) to ownership or part ownership of the Claimant’s Community Trade Mark per se. The Defendant does however seek an account of such share of the profits made by the Claimant in the 6 years prior to the date of service of the counterclaim as is attributable to the use by the Claimant of the Defendant’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 the valuation thereof.

[8]It is worth adding that the case does not involve any dispute about copyright. The Defendant accepted that he continued to receive royalties relating to the original songs and recordings which were made by the band in its 1970s heyday.

[9]The matter came on before me for trial on 19th and 20th September 2013. The Claimant was represented by Mr Philip Harris, a trade mark attorney, and the Defendant was represented by Ms Madeleine Heal of counsel. The major issue at trial was that of bad faith. The issue of infringement occupied much less time, and was largely concerned with the use of “Martin Turner’s Wishbone Ash” as the name of the Defendant’s band rather than the domain name. I am grateful to both advocates, and to those instructing them, for their focus on the key issues. This allowed a trial of some legal and factual complexity to be heard within 2 days.

The witnesses

[10]The Claimant’s witnesses were as follows:a. Mr Andrew (Andy) Powell himself, as lead witness. His evidence covered the history of the band; the history of his disputes with the Defendant; and his application for the trade mark in suit in 1998.

b. Mr Guy Roberts, who has been a fan of Wishbone Ash since the 1970s. He has been in charge of the Wishbone Ash fan club and fanzine (called “Hot Ash”) since December 1996, and has run its “Ashcon” annual conventions since 1998/1999.

c. Mrs Nicola Bowden, who is the Art and Leisure Manager at the Mick Jagger Centre in Kent. She gave evidence about two performances there by the Claimant’s band.

d. Mr Martin Looby, proprietor of South Yorkshire Musical Enterprises. He was the international booking agent for Wishbone Ash for at least part of the period from 1992 to 1999. He gave evidence about a 1995 Wishbone Ash tour in which the Defendant had participated, and about his advice to the Claimant to register the name of the band as a trade mark.

e. Mr Andrew Nye, owner of the entertainment and music agency Andy Nye Music Limited. His agency has been the exclusive booking agent for Wishbone Ash in the UK since December 1999. He dealt with the activities of the Defendant’s band since 2005, and produced figures showing that the Claimant’s band’s gross income had declined since 2007.

f. Mr Leon Tsilis, a semi-retired former record executive with MCA Records. MCA Records is the label for whom Wishbone Ash recorded between 1970 and 1981. Mr Tsilis, who gave his oral evidence via video link, had first seen the band in 1971 and became particularly involved with them (both via MCA and outside of working hours) around 1975. He helped the Claimant launch his website, at www.wishboneash.com, in or after 1995, and in around 1997 he also became involved with the “Hot Ash” fanzine. Mr Tsilis also gave evidence about his involvement in the Claimant’s decision to apply for the trade mark in suit.

g. Mrs Kate Goldsmith, the publicist for Wishbone Ash in the USA. She has been a fan of Wishbone Ash for approximately 25 years, and gave evidence about the way in which performances by the Defendant’s band were promoted in the USA this year. She was also cross-examined by video link.

h. Mr Keith Fox, who is now and has been since 1992 a detective constable in the South Yorkshire police force. He has been a fan of Wishbone Ash since the age of 17, particularly since his interest was renewed in early 2006. He had seen performances given by both bands, and was not impressed with the musical quality of the performances given by the Defendant’s band. His statement focussed on Google Alerts he had received which related to the Defendant’s band and which he considered to be misleading, but included some other incidents which had involved him personally.

i. Mr Joseph Crabtree, the drummer in the current lineup of Wishbone Ash since March 2007. His evidence related to various emails which he had received, and web entries which he had seen, which in his view demonstrated confusion between his (ie the Claimant’s) band and the Defendant’s band. He was made available for cross-examination at trial but the Defendant indicated it did not want to cross-examine him.

j. Ms Helen Peter-Thomas, a trade mark attorney with Walker Morris LLP (the Claimant’s legal representatives). She was briefly cross-examined on evidence she had given in relation to OHIM proceedings.

[11]The Defendant’s witnesses were as follows:a. Mr Martin Turner himself, as lead witness. His evidence covered the history of the band; the history of his disputes with the Claimant; and the reasons why he believed his band was entitled to perform as “Martin Turner’s Wishbone Ash”.

b. Mr Steven Forster, an event promoter. He explained that he was aware of the Claimant’s and Defendant’s bands, and that he knowingly chose to book “Martin Turner’s Wishbone Ash” for the High Voltage Festival of classic rock in July 2010. He did not believe fans would be confused as to which band was playing. He was not required to attend for cross-examination.

c. Mr Gary Carter, who founded the “Hot Ash” fanzine in 1990. He served two witness statements in which he set out various disputes which he had had with the Claimant, and disputed a number of detailed factual points made in the evidence of the Claimant’s witnesses. He did not believe fans would be confused between the two bands either. He was unable to attend for cross-examination.

d. Mr Steven Upton, who was the drummer in the band between 1969 and 1990. Mr Upton also handled the administration of the band’s finances between 1983, when its then manager resigned, and 1990. He had had only limited contact with the parties since leaving the band in 1990. In his second statement dated 8th August 2013, he expressed his opinions about the assets created by the original 1970s band lineups and the ownership thereof.

e. Mr Raymond Weston joined Wishbone Ash as drummer in 1990, after Mr Upton had left, and stayed with the band for a few years. His statement dealt with royalty disputes relating to the 1990s. This is not relevant and he was not cross-examined on it. I ignore his evidence.

f. Mr Donald Mackay has been the booking agent for Martin Turner’s Wishbone Ash since 2005. He said that his contracts with venues specified that the band had to be described as “Martin Turner’s Wishbone Ash”. In his first statement he accepted that on “very rare occasions” mistakes might be made and different materials used, but he said that this only happened “a couple of times a year” and that he promptly corrected such mistakes. In his second statement he accepted that there had been 3 such instances in the first 7 months of 2013. He pointed out that the decline in attendances for the Claimant’s band’s shows in 2009 might be due to the recession.

g. Mr Michael Stubbs is a partner in the Defendant’s solicitors. His witness statement exhibited various documents, including a decision made by Nominet’s designated expert (Mr Nick Gardner) in 2005 relating to a dispute about the Defendant’s domain name. He was not required to attend for cross-examination.

h. Mr David “Ted” Turner was guitarist in the band between 1969 and 1973, and again between 1987 and 1994. He had also toured Texas as “Wishbone Ash” in 1983, in a band consisting of himself and several other hired musicians. This lineup did not include any of the other original band members.

i. Ms Jacqueline Bolton is a trade mark attorney in the Defendant’s solicitors. Her witness statement exhibited witness statements of Mr Aubrey Powell (who is not related to the Claimant) and Mr Roderick Brosse. These statements had both been filed in OHIM proceedings. Mr Aubrey Powell’s statement relates to copyright in artworks and Mr Brosse’s statement dealt with the Defendant’s creation of the Wishbone Ash name in the late 1960s. Mr Powell’s statement is irrelevant and the fact that the Defendant created the name was not disputed. Neither of these exhibits was subject to cross examination. Ms Bolton herself was not required to attend for cross-examination. This evidence is not relevant and I ignore it.

j. Mr Daniel Earnshaw is Business Affairs Manager at QEDG Management, the management company for the Defendant and his band and has been there for 4 years. He said that during his time the Defendant’s band had been known as Martin Turner’s Wishbone Ash (or MTWA), not as Wishbone Ash, and that he had never seen a single letter or email of complaint from a fan saying that the Defendant’s band was something other than they thought it would be when they chose to buy a ticket. He did not believe that it was normal for one band member to register a trade mark for the band’s name in his own name. He was not required to attend for cross-examination.

k. Mr Markus Sollner is and has been since May 2009 the agent of the Defendant’s band in German speaking territory. He said that in his contracts with promoters there was a clause requiring the Defendant’s band to be billed as Martin Turner’s Wishbone Ash. He was not required to attend for cross-examination.

l. Mrs Hana Pevny served two witness statements, the second clarifying the first. She took over the management of the band when Mr Upton left in 1990, and until she returned to the United States in 1992. In cross-examination she agreed that she had no knowledge of any arrangements between the band’s members relating to ownership of the name. In her statement she had mentioned a discussion with the Claimant about his trade mark application but in cross examination she said that this only took place in 2009. She agreed that she had had no discussions with the Claimant about trade marks in or around 1998.

[12]I am satisfied that each of the witnesses was doing his or her best to assist the Court. Neither party suggested otherwise. Counsel for the Defendant correctly pointed out that a number of the Claimant’s witnesses gave their opinions on matters which were for me to decide. I have no doubt that the Claimant’s witnesses sincerely hold these opinions but I have given those parts of their evidence no weight. I also note that Mr Upton expressed opinions of a similar nature on behalf of the Defendant. I am sure his opinions are also sincerely held, but I bear in mind that Mr Upton’s opinions are those of a non-lawyer and are being expressed during the course of litigation some 30 years after the relevant timeframe. I have therefore given no weight to his opinions either.

Findings of fact

[13]Many of the relevant background facts were agreed in the detailed pleadings: see [3]-[22] of the Defence and [3] of the Reply. The more contentious areas relate to the Claimant’s state of mind when he applied for the mark in suit, and the issue of confusion. I shall deal with the less contentious areas first, as follows.

The First Wishbone Ash

[14]In 1969 the Defendant (bass guitar and vocals) and Steve Upton (percussion) advertised for and recruited the Claimant and David “Ted” Turner to join a band. The Defendant created the name “Wishbone Ash”, which the band used. Its first performance as “Wishbone Ash” was at Dunstable Civic Centre on 10 November 1969.

[15]The band achieved significant commercial and critical success between 1970 and 1974, including (in 1972) an album entitled “Argus”. This album was voted “best rock album of the year” by Sounds magazine and “Top British Album” by the Melody Maker magazine. Mr Powell said, and I accept, that it had sold at least 500 000, and possibly 800 000, copies and was still selling today. The band also released a successful double live album in 1973 entitled “Live Dates”. It developed, and became well known for, a twin harmony lead guitar sound. They were managed at this time by Miles Copeland, who later managed The Police.

[16]It was common ground that the First Wishbone Ash was a partnership at will with all liabilities and profits divided in equal 25% shares.

[17]As the Defendant later said in his autobiography, No Easy Road, “no verbal or written agreement was ever made” relating to shares or rights in the band name. He made a similar point in an article which he approved and which appeared on his website under his name on 20 June 2006. I find that there was no agreement relating to the ownership of the goodwill in the name Wishbone Ash at any time, whether before February 1998 or at all. None of the witnesses suggested there had ever been any such written or oral agreement, far less identify such an agreement or when (or between whom) it was made.

The Second Wishbone Ash

[18]On 2nd May 1974, Ted Turner left the band. The Defendant recalled this as a “sad time”, and blamed the pressure the band was under. Mr Turner agreed that he never claimed any rights in the name after leaving the band or sought to prevent them using it. He accepted that the rights in the name moved to them. As he put it, the Second Wishbone Ash had 3 of the original members, and they had a 75% say in the situation.

[19]Ted Turner was replaced by Mr Laurie Wisefield. It was agreed that Mr Wisefield should also share in the band’s profits, just as Mr Turner had done, but Mr Wisefield was the last member of the band to share in profits in this way.

[20]This second lineup was also commercially and critically successful, although not quite as successful as the first lineup. Its most successful album was “New England”, released in 1976. Mr Powell said that it had sold possibly 250 000 copies. The band also headlined Reading Festival in 1975, performed with Cat Stevens at Alexandra Palace in 1979, and played Wembley Arena in 1977 and 1979.

[21]It was common ground that the Second Wishbone Ash was, until 5 April 1978, another partnership at will with all liabilities and profits divided in equal 25% shares. As the Defendant said, the band was a democracy. When the other 3 members of band wanted to relocate to the USA in 1976, he was against it but he abided by the majority decision and went with everyone else.

The First Limited Company

[22]The significance of the date of 5 April 1978 is that the members of the Second Wishbone Ash incorporated Wishbone Ash Limited (“the First Limited Company”) on that date. This was largely the idea of Mr Upton, who had by this time taken over the day to day management of the band, but the other band members all agreed. Each member because a director and equal shareholder of the First Limited Company.

[23]It is clear that the First Limited Company was set up with a view to limiting the personal liabilities of the band members, and that the day to day business of the band was conducted through this company. However there is no evidence that anyone turned their minds to the question as to whether the First Limited Company would own the goodwill in the name of the band. I find that there was no such agreement transferring that ownership to the First Limited Company.

[24]In addition, it seems inherently unlikely that the band members would have agreed to transferring ownership of the goodwill into the name of the First Limited Company if they had turned their minds to it. It was one thing to use the company to limit their own liability, but it would have been quite another to transfer a valuable asset from their own names into company ownership. For instance such a transfer would have meant that the band members risked losing control of the band name in the event of insolvency of the company, an event which later happened. Moreover it was not necessary for the company to own goodwill in the name in order to conduct the day to day business of the band (eg arranging touring dates, studio time, etc). The company might merely have licensed the use of the name instead. It might have been sensible to set up two limited companies, one to hold assets and one to trade under licence, but that was not done either.

[25]The Defendant resigned as a director of the First Limited Company on 2 February 1983, but he remained a shareholder. The only accounts I have seen are those for the year ended 30th April 1989, which indicate that it was at that time a small and lossmaking business. The First Limited Company was dissolved on 16 February 1993.

The Third Wishbone Ash

[26]In October 1980 the Defendant parted company with the Second Wishbone Ash. The Defendant emphasised, and I accept, that he did not “resign” from the band. He felt that the other 3 members of the band had discussed his future behind his back, and that they had come to the conclusion that they did not want him to continue as a member. He did not take any steps to stop the other 3 members from continuing to use the name.

[27]Following the Defendant’s departure the 3 remaining members of the Second Wishbone Ash carried on playing together as Wishbone Ash. Additional musicians were recruited from time to time to play on a contract basis (ie salaried, rather than on an equity basis). These included bassist vocalist John Wetton, bassist Trevor Bolder, back vocalist Claire Hamill, bassist/vocalist Mervyne Spence and bassist Andy Pyle. Meanwhile the Defendant was pursuing a range of solo projects.

[28]The Third Wishbone Ash lasted until 1985. Its business was conducted via the First Limited Company.

Mr Ted Turner’s Wishbone Ash

[29]As stated above in 1983 Mr Ted Turner, acting independently of the Third Wishbone Ash, formed a band which he called Wishbone Ash. Both Mr Ted Turner’s Wishbone Ash, and the Third Wishbone Ash, toured the United States at around the same time. Both bands used exactly the same name, ie “Wishbone Ash”. Unsurprisingly, and as Mr Upton recalled, this gave rise to considerable confusion among promoters and venues.

[30]The Claimant and Mr Upton had their US law firm send a cease and desist letter to Mr Ted Turner. This had the desired effect in that Mr Ted Turner stopped the activities complained of. Mr Ted Turner explained that he stopped because he felt that the rights in the name were owned by the Claimant and Mr Upton, and that he had no right to use the name himself. The Defendant had no involvement in this.

The Fourth Wishbone Ash

[31]As the 1980s progressed the UK music scene began to change and the Third Wishbone Ash, in common with many 1970s bands found themselves in financial jeopardy. In 1985 the Third Wishbone Ash suffered two major blows. It lost its then manager, a Mr John Sherry, who advised that the band should file for bankruptcy. On 31 December 1985, a week before the start of an American tour, Mr Wisefield also resigned.

[32]The Claimant and Mr Upton (the two remaining survivors of the first and second lineups) responded to the crisis in the same way as they had done in 1980: they recruited more musicians, and carried on performing as Wishbone Ash (now “the Fourth Wishbone Ash”). The Fourth Wishbone Ash turned out to achieve the greatest chart success which any incarnation of the band had had since the 1970s heyday, when its Twin Barrels Burning reached number 22 in the UK charts. However in commercial terms this was a difficult period where the band’s main concern was to stave off bankruptcy. This led them to perform in smaller venues and to tour in less conventional territories such as India and the former Soviet Union.

[33]The Fourth Wishbone Ash also conducted its business through the First Limited Company. It lasted until May 1987.

[34]The Defendant continued to pursue his own projects during this period.

The First Reunion Wishbone Ash and the Second Limited Company

[35]In May 1987, Miles Copeland (by then the owner of a successful record label, IRS records) persuaded all four members of the First Wishbone Ash to put aside their remaining differences and reunite as Wishbone Ash. Although the original plan was to record just one album, the reunion actually produced two albums (“Nouveau Calls” and “Here to Hear”). The band remained together until July 1990, when Mr Upton left the band.

[36]There was a dispute about the legal basis on which the First Reunion Wishbone Ash operated. The evidence on this was patchy.

[37]Both the Claimant and Defendant agreed that another limited company called MAST Music Limited (MAST standing for the initials of the band members) was set up, but this only happened on 1 May 1990. MAST Music Limited was referred to as “the Second Limited Company”. The Second Limited Company was, they said, formed for the same reasons as the First Limited Company had been. Neither side explained to me why it was considered necessary to form a Second Limited Company at all, since the First Limited Company was still in existence at this time.

[38]The Defendant’s case as pleaded was that “prior to 1 May 1990, all the business of the First Reunion Wishbone Ash was conducted through the First Limited Company, alternatively it was a partnership at will”: see paragraph [15] of the Defence. It goes on to allege that after 1 May 1990, all of the business of the First Reunion Wishbone Ash was in fact conducted through the Second Limited Company.

[39]The Claimant’s case as pleaded was that “the business of the First Reunion Wishbone Ash was conducted by the First Limited Company” and that “at this time all the business of the First Limited Company was carried on by its two directors, namely the Claimant and Mr Upton”: see paragraph [6] of the Reply. The Reply went on to deny that any business went through the Second Limited Company and instead alleged that all of the business alleged to have done so actually went through his personal bank account. However in his witness statement the Claimant said that for purposes of the first reunion album “we were all equity partners” and this was not challenged in cross examination. His statement added that the Second Limited Company saw little action, and this was not challenged either. The Second Limited Company was in any event dissolved on 23 November 1993.

[40]Having regard to the totality of the evidence, it seems to me that the First Reunion Wishbone Ash – which, after all, consisted of the original lineup - operated on the same basis as the First Wishbone Ash. That is to say, it was a partnership at will with all liabilities and profits divided in equal 25% shares throughout its entire lifetime and not just for the first reunion album.

[41]As with the First and Second Wishbone Ash partnerships, the entity through which the First Reunion Wishbone Ash partnership actually traded on a day to day basis was the First Limited Company up to 1 May 1990. Thereafter, although the intention was to trade via the Second Limited Company it actually traded via the Claimant’s bank account.

The Second Reunion Wishbone Ash

[42]In July 1990 Steve Upton resigned from the First Reunion Wishbone Ash. He had been in all incarnations of the band since 1969, and he never played with them again. Mr Upton had acted as the band’s manager during the periods when the band had no formal manager, and this role passed to the Claimant upon his departure.

[43]The Claimant, the Defendant, and Ted Turner recruited additional musicians from time to time to play on a contract basis. Mr Upton’s replacement was Mr Raymond Weston. The band carried on touring as Wishbone Ash and also released another album (“Strange Affair”). Overall the Second Reunion Wishbone Ash was not as successful as the First Reunion Wishbone Ash had been, but it still toured internationally. This state of affairs, referred to as the “Second Reunion Wishbone Ash”, lasted until 1 October 1991.

[44]The evidence relating to the legal basis on which the Second Reunion Wishbone Ash operated was even more patchy than the evidence relating to the First Reunion Wishbone Ash. Mr Weston was never a partner, and it is not clear whether the Claimant, Defendant, and Ted Turner operated as a partnership. However de facto control had certainly passed to the Claimant since he now controlled the bank’s finances via his personal bank account.

The Third Reunion Wishbone Ash

[45]In October 1991 the Defendant parted company with the band for a second time. He had been aware that the initial success of the reunion was fading, particularly after Mr Upton’s departure, but he was still surprised to receive a call on his birthday from the Claimant telling him that his services were no longer required. The Defendant was, and still is, unhappy about this but took the view that “I can’t force my way on stage”. He did not take any steps to stop the Claimant and Ted Turner continuing to use the name.

[46]The Claimant and Ted Turner continued recording and performing as Wishbone Ash, again recruiting additional musicians from time to time to play on a contract basis. As pointed out by the Claimant, the term “Third Reunion Wishbone Ash” is potentially misleading since by this time the band was back down to only two of the original members, but it is a convenient one to describe this part of the band’s history.

[47]This incarnation was less successful than the “Second Reunion Wishbone Ash” had been. By the end of 1991 the business was in serious decline, and the Claimant had run up personal debts. This prompted him to engage Martin Looby as manager. The “Third Reunion Wishbone Ash” came to an end when Ted Turner resigned for a second time on 31 December 1993.

[48]Mr Turner said that when he parted company with the band on 1st January 1994, the situation was the same as it had been in 1974 so far as he was concerned. He asserted no claim to the name.

The Claimant’s band, 1994 -date

[49]On 1st January 1994 the Claimant found himself the last surviving member of the original Wishbone Ash lineup. In cross-examination he said that this was the time from which he saw himself as sole owner of the goodwill in the name. He carried on performing and recording under the name, but on a sole trader basis whereby he employed various third party musicians. As explained above he had already assumed the financial obligations of the band, but now he was in total control.

[50]The Claimant’s band carried on touring and releasing new albums. “Illuminations” was released in 1996, and two albums (“Trance Visionary” and “Psychic Terrorism”) were released in 1998. It has continued to tour in the UK and abroad and to release new albums since that time, with its most recent album (“Elegant Stealth”) being recorded in 2011. The Claimant said that this album had sold about 10 000 copies in Germany, 5-6 000 in each of the UK and USA, and about 3 000 copies in France. This is much less than in the 1970s heyday but as he pointed out the rise of digital downloads has meant that far fewer records are now sold.

[51]The songs played by the Claimant’s band today are a mixture of classic material, from the 1970s, and new material. The precise proportion was not established and is in any event likely to vary. Mr Roberts thought it was at least 30% and perhaps 40%. It was established in cross-examination that the Claimant had seriously considered performing the entirety of the Argus album during a live performance, and perhaps the entirety of the New England album as well. I find that a substantial proportion of the songs played by the Claimant’s band are classic songs from either the first or second lineups.

[52]Neither Ted Turner, nor Mr Upton, nor the Defendant has taken any steps to prevent the Claimant carrying on using the name Wishbone Ash for his band.

Relations between the Claimant and Defendant, 1994 -1998

[53]At the beginning of this period relations between the Claimant and Defendant were still friendly. The Defendant continued to assist with the back catalogue. For instance when a record company wanted to release an album, the Defendant would be asked to clean up the sound and provide bonus tracks. One example of this is 4-CD box set called Distillation, which was assembled in 1996 and released in 1997. The Defendant was pursing his own projects for most of this time, including “Walking the Reeperbahn” which was released in 1996.

[54]The Defendant did not join any of the Claimant’s band’s tours, with the following exceptions. In 1995 there was a tour to celebrate the 25th anniversary of Wishbone Ash which covered the UK, Germany, Austria, Switzerland, and Benelux. The bassist for Wishbone Ash at that time, a Mr Tony Kishman, pulled out of the band shortly before the second part of the tour was due to take place. The Claimant asked the Defendant to replace Mr Kishman, and the Defendant did so. The Defendant also participated in a different tour, which took place in 1996 and which was done to promote the Illuminations album. The Defendant did so even though he had not featured on the Illuminations album itself.

[55]The Defendant explained that his financial arrangements for agreeing to do these tours “were always very messy and loose”. He did them for a flat fee, plus a share of merchandise earnings. As an example, the band’s handwritten financial records indicate that he was paid £420 for 4 day’s work. He explained his concern that the Claimant “seemed to be trying to reduce me to the status of a side man/hired hand”. However as the Claimant points out, the term “hired hand” is an accurate definition of his position at that time.

[56]By late 1997 relations between the Claimant and the Defendant had cooled further. On November 28th of that year, the Claimant wrote to the Defendant inviting him to join a 35-date Wishbone Ash tour in Ireland, England, Germany and Holland spanning February and March 1998. The Claimant also contacted Mr Wisefield at around the same time, in the hope of achieving yet another band reunion. Mr Wisefield did reply, but with what the Claimant thought was an unrealistic proposal. The Defendant did not reply to the Claimant until 14th January 1998. By letter dated January 16th 1998 the Claimant explained to the Defendant that he had, in the light of any response from the Defendant, made alternative plans for the tour but offered the Defendant a chance to guest on selected dates. The Defendant was not interested in that.

[57]Both the Claimant and Defendant were cross-examined about this exchange of correspondence and their discussions around that time. It emerged that the stumbling block was as follows. The Defendant was not interested in participating in the tour except on an equity basis, and the Claimant was not interested in offering him more than payment as a hired musician. Hence the discussion went nowhere, and the parties went their separate ways.

[58]In the Defence, there was an allegation that both the Defendant and (to the best of the Defendant’s knowledge and belief) Laurie Wisefield made it clear to the Claimant in 1997 that they did not accept the Claimant had acquired exclusive rights to trade under the name Wishbone Ash. No more details were given about this incident in the Defence. It was not mentioned in the Defendant’s own witness statement nor was it put to the Claimant in cross-examination. This is surprising since it would, in the context of this case, have been an important point and it would have been relevant to consider how such a conversation had come about. When the Defendant himself was cross-examined about this allegation, and asked to explain why he had left it out of his witness statement, he explained that he could not recall the incident. Hence I discount this allegation.

[59]As a further indication of the way in which the parties’ relationship had cooled by this time, the “Psychic Terrorism” album which the Claimant’s band released in 1998 featured samples and riffs from the original 1970s recordings but did not credit the Defendant, or indeed any of the original band members save for the Claimant. The lingering resentment caused by this lack of credit featured in a number of the Defendant’s witnesses’ evidence.

The Claimant’s trade mark application in 1998

[60]As stated above I will deal the Claimant’s own state of mind as a separate topic. I find that the background to the Claimant’s trade mark application was as follows.

[61]Mr Tsilis explained that the Claimant had approached him in 1997 about a shop selling clothing with the “Wishbone Ash” imprint on its label. He was unclear as to whether the Claimant had had the original idea of registering the band’s name as a trade mark from him or from Mr Looby, but he did remember discussing the topic with the Claimant. In particular Mr Tsilis was aware that other bands such as Lynyrd Skynyrd, The Fixx, and Golden Earring had registered their names as trade marks. He was asked whether he believed it was important to the Claimant to stop other band members using the name Wishbone Ash. He said no because in his view they had “all quit” and were “not going to be a part of it”. The Defendant gave no reason for rejecting this evidence and I accept it.

[62]Mr Looby was also aware of the issues surrounding intellectual property from his experience with another of his bands in 1994/1995. In particular there had been an argument about ownership of the band name, and he had had a conversation about it with Harbottle and Lewis, the well-known law firm. He was also aware that the clothes dispute was not the only one involving the use of the words Wishbone Ash by third parties. He therefore advised the Claimant to register the name as a trade mark in order to stop other businesses using the name. He did not think that any other member or ex member of Wishbone Ash would have a claim to the name, and that he felt it was his responsibility as agent to look after the commercial and financial interests of the band. He was also asked about the position of the Defendant, Ted Turner, Laurie Wisefield, and Steve Upon at this time. In his view they were not in his business circle and as such he had no interest in them. He considered that “they had quit, and done other things”. The Defendant gave no reason for rejecting this evidence either and I again accept it.

[63]The Defendant’s evidence that he knew nothing about the Claimant’s trade mark application until 2004, by which time it had matured into a trade mark registration, was not disputed.

The Defendant’s use of “Martin Turner’s Wishbone Ash”

[64]In either 2004 or 2005 the Defendant started touring as Martin Turner’s Wishbone Ash. His band played, and has always played, songs from the 1970s heyday. The Defendant has released live albums of his band’s new performances of these original songs, as well as a re-recording of the original 1972 Argus album.

[65]The Claimant complained about the Defendant’s acts via his lawyers. The parties came to a “gentleman’s agreement” in around November 2005 which was expressly intended by the parties not to be legally binding. The basis of this agreement was that the Defendant would change the name of his band to “Wishbone featuring Martin Turner”, in exchange for a cessation of hostilities and enhanced cooperation. The Defendant used this name for a short period of time, but he felt that the Claimant was not maintaining his side of the deal and reverted to “Martin Turner’s Wishbone Ash”. The date when he resumed the original use is not clear on the evidence, but neither side suggested that this mattered.

[66]In Mr Nye’s view, the fact that the Claimant’s band was still producing new material was a key factor in its being able to continue touring, and that if the band had merely played the original songs that would not have been possible. I do not agree. As pointed out above the Defendant’s band does not play any new songs, yet has toured for many years. Both sides also referred to the many “tribute bands” in the music industry, which exist solely to play the songs of the band to which they are a tribute.

The domain names and the Nominet dispute

[67]The Claimant registered the domain name www.wishboneash.com some time in the 1990s. Somewhat surprisingly the precise date of this registration became a matter of dispute between the parties when I circulated a draft of this judgment. According to an interview which Mr Tsilis gave to the “Hot Ash” fanzine in May-Jun 1997, and which was exhibited to his witness statement, the band’s website had been running since July 1995. However it is not clear from the article that this website was associated with the domain name www.wishboneash.com. From other documentation to which I was directed by the Claimant, it seems that this website may instead have been located at the web address http://emporium.turnpike.net/argus/index.html. Moreover the Defendant drew my attention to an internet “Whois” printout which had been annexed to its skeleton argument for trial, and which indicated that the Claimant’s domain name had been registered on 15th March 1998. Neither side suggested that the precise date matters, but having regard to the foregoing I find that the Claimant’s said domain name was registered on 15th March 1998. The Defendant registered the domain name www.wishboneash.co.uk on 15th June 1998, and also set up an associated website. It is not clear when the Defendant’s website became operational, but it seems to have been in 2000.

[68]Prompted by his concern about the Defendant’s use of the term Martin Turner’s Wishbone Ash, the Claimant instituted proceedings with Nominet on 22 November 2004, the internet domain name agency, complaining of the Defendant’s domain name. The expert gave his decision on 20th January 2005 (incorrectly dated 2004 in the decision). Having regard to Nominet’s terms of reference, he rejected the complaint. He explained that the disputes of ownership, goodwill, and trade mark validity were all matters for the Court. His conclusion was “[the Claimant]hasnot established that the registration of the [Defendant’s] Domain Name is Abusive”.

The Defendant’s trade mark application in 2008

[69]The Defendant had learned of the Claimant’s trade mark registration during the Nominet proceedings. Ted Turner, Steve Upton, and the Defendant then decided to make their own Community Trade Mark application for “Wishbone Ash” in 2008. The Claimant learned about this in November 2008 and entered an opposition at OHIM in December 2008, where he relied on his own trade mark registration. In May 2010 these OHIM proceedings were resolved in favour of the Claimant.

The proposed 2009 reunion

[70]In 2009, the members of the original line up were offered a one off reunion concert to mark the band’s 40th anniversary. This would have taken place at the Hammersmith Apollo and would have involved a substantial fee. It is striking that both the Claimant and the Defendant were interested in principle in participating in this reunion concert, despite their ongoing legal differences. Ultimately however no agreement was reached.

Issues to be decided

[71]By order dated 18th December 2012 HHJ Birss QC (as he then was) identified the issues to be decided at trial as follows:a. Was the Claimant’s application for Community Trade Mark registration no. 742684 (“WISHBONE ASH”) (“the Trade Mark”) made in bad faith;

b. Has the Defendant used, in the course of trade, a sign which is identical with or similar to WISHBONE ASH;

c. Does there exist, because of use by the Defendant of a sign or signs similar to WISHBONE ASH, a likelihood of confusion on the part of the public;

d. Is there a reputation in the Community in WISHBONE ASH;

e. Has the Defendant’s use of his sign taken unfair advantage of, or been detrimental to, the distinctive character or repute of WISHBONE ASH;

f. Is the Claimant liable to account to the Defendant for use made by him of goodwill attaching to the name WISHBONE ASH.

[72]I now consider these in turn. Issue (a) – Was the Claimant’s application for the Trade Mark made in bad faith?

Legal context

[73]In Frost Products v F C Frost Limited [2013] EWPCC 34, ETMR 44 Vos J (as he then was, sitting as a Judge of this Court) recently had to deal with an allegation of bad faith relating to an application for a Community Trade Mark. He considered Harrison’s Trade Mark Application

[2005] FSR 10

, Court of Appeal and Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH(C-529/07) [2009] ETMR 56 at [106]-[107. It was suggested to Vos J that he should not follow Harrison’s Trade Mark, but should rather be guided by the Lindt case. As to this Vos J said: 129 In my judgment, Lindt and Harrison are addressing different questions. Harrison is addressing the meaning of “bad faith” in the CTMR, and Lindt is addressing the factors that may be taken into account in determining whether it exists. Bad faith is, as many cases have said, the opposite of good faith, generally implying or involving, but not limited to actual or constructive fraud. It may be a design to mislead or deceive another, or involve any other sinister motive. It also includes unfair practices involving a lack of any honest intention. The factors that may be taken into account include: i) Knowledge that a third party is using the sign in a Member State, which can be inferred from length of use; ii) The applicant’s intention, when the application was made, including the intention to prevent a third party marketing a product, and the lack of intention to use the CTM himself; and iii) The extent of the reputation enjoyed by a third party’s sign at the time of the application.

[74]Lindt was cited and followed by the Court of Justice in Malaysia Dairies Industries, [2013] ETMR 36, a case under the parallel “bad faith” provision of Directive 2008/95. The Fifth Chamber of the Court of Justice stressed that “in order to permit the conclusion that the applicant is acting in bad faith within the meaning of that provision, it is necessary to take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration”: see ibid at [37].

[75]Lindt was also considered by the English Court of Appeal in Hotel Cipriani Srl v Cipriani (Grosvenor Street) Ltd

[2010] RPC 16

. At paragraph [56] of the Court of Appeal’s judgment, Lloyd LJ (with whom Stanley Burnton and Jacob LJJ agreed at [126], [127]) went on to uphold the finding of Arnold J at first instance that the application in that case had not been made in bad faith. He said:

“My reasons are that when the registration was applied for there was no other significant use of the word Cipriani (other than by Hotel Villa Cipriani and Locanda Cipriani, which are special cases and irrelevant) as a trade mark in relation to hotels or restaurants in Europe, and the Cipriani group did not have any right to use that word in that way which would have been entitled to any degree of local legal protection. The Cipriani family had agreed in 1967 not to use the name Cipriani for hotels or restaurants, and in 1996 they were still abiding by that agreement in Europe. Accordingly there was neither any use of the mark, nor any apparent right to use the mark, with which the registration was incompatible.”

[76]The trade mark attorney for the Claimant also reminded me that an allegation of bad faith is a serious one, that the onus is on the party attacking to make it out, and that although the standard of proof is on the balance of probabilities cogent evidence is required due to the seriousness of the allegation. This is well established: see eg Red Bull v Sun Mark [2012] EWHC at [130]-[138] and in particular paragraph [133].

Analysis

[77]The Claimant’s evidence was that in his view he did not require the consent of the other original members, given that in 1998 he was the only one who remained in the band and kept it going. He added that the band has been not just his life but also his business and main, if not sole, source of income for the past 43 years.

[78]He specifically denied that he made the application in his sole name in an attempt to exclude Mr Upton, the Defendant, or Ted Turner. As he explained in cross-examination, by February 1998 he had concluded that they were not interested in performing under that name.

[79]Instead he had made the trade mark application, upon the advice which he was given by Mr Tsilis and Mr Looby, in order to protect the band’s name against third parties. In 1994, for instance, he had not been thinking about trade marks.

[80]I accept this evidence. I bear in mind the following:a. First, as explained above I find as a fact that Mr Tsilis and Mr Looby had given this advice and that such advice reflected the fact that unrelated third parties were using the name Wishbone Ash. The Claimant’s application for a trade mark was a reasonable commercial step for him to take.

b. Secondly, none of the other 3 original band members was performing as Wishbone Ash in his own right in 1998. The only one of them who had ever performed in his own right as Wishbone Ash had been Mr Turner, via his short-lived venture in Texas 15 years previously, and he had stopped this activity promptly upon complaint from the Claimant and Mr Upton. The fact that none of them was performing as Wishbone Ash in his own right means that there was no established use of the mark by any of them which the Claimant’s trade mark registration would prevent, nor was any of them asserting any right to use the mark with which the registration was incompatible.

c. Thirdly, in February 1998 none of the other 3 original band members appeared interested in performing as Wishbone Ash in any capacity at all. Mr Upton had disappeared from the scene in 1990 and Mr Ted Turner had followed him in 1994. The Defendant was the only one who had showed any recent interest, but his involvement in the 1995 and 1996 tours of the Claimant’s band was as a hired hand and not as a partner. In addition the Defendant had given a half-hearted initial response to the Claimant’s offer to participate in the 35-date tour which was planned for 1998, and that response later hardened into a refusal. The terms of that refusal appeared at the time to be, and turned out in fact to be, insurmountable. There is no evidence that the Defendant had any plans to play in Wishbone Ash at this time, far less any plan to use the name for a band of his own.

d. Fourthly, it was not suggested to the Claimant that in February 1998 he could or should have foreseen the possibility that the existing position might change, and in particular foresee that any of the original band members would want to start performing as Wishbone Ash in their own right in the future. I accept the Claimant’s evidence that he was surprised to find out about the Defendant’s use of “Martin Turner’s Wishbone Ash” in 2004.

e. Fifthly, none of the 3 original band members had ever sought to prevent or in any way restrict the Claimant’s use of Wishbone Ash for his own band. If the Defendant’s case is correct, he could have refused to permit the use of the name for any of the tours to which he was not a party (or to which he was a party, but on terms which he considered unacceptable) by virtue of his joint ownership of the goodwill in the name but he never did so. This was consistent with the fact that no departing band member had ever sought to prevent or in any way restrict any use of Wishbone Ash by the remaining band members throughout the band’s long history. Indeed neither the Defendant, nor any of the other original band members, seeks to stop the Claimant using the name Wishbone Ash for his band even now.

f. Sixthly, as I explain below the issue of actual ownership in law of the goodwill in the name Wishbone Ash in 1998 raises some difficult questions. However I find that the Claimant’s belief that he was the sole owner of that goodwill was both honestly and reasonably held.

[81]The cross-examination did not explore the reasons why the Claimant failed to tell the other original band members about his trade mark registration in or after February 1998. However, the trade mark attorney for the Claimant submitted, and I accept, that the Claimant was not under any obligation to do so. In any event merely making a trade mark application in the belief or suspicion that others might object to it does not establish bad faith. I have no doubt that the Claimant would have regarded any objections which might have been raised by the other band members in February 1998 as ill-founded, because that was how he regarded such objections when they were raised. In those circumstances I do not accept that his failure to inform the others before or whilst making his trade mark application means that his conduct falls below the standard of acceptable commercial behaviour observed by reasonable and experienced persons in this area.

[82]Indeed it cannot be automatically assumed that the other original band members would have objected in 1998 if they had been informed. This is partly because none of them appeared interested in the band, or in using the name, in February 1998 as explained above; and partly because when the other band members did find out about his trade mark registration in 2004, they still took no steps to invalidate it. It is true that the Defendant was not sued for infringement of this mark until much later, but it is not as if the Defendant (and the other band members) sat back and did nothing. As pointed out above, they made their own trade mark application in OHIM in 2008.

[83]For all these reasons I find that the application was not made in bad faith.

Ownership of goodwill in the name

[84]Both sides presented detailed arguments as to who actually owned the goodwill in the name Wishbone Ash as at February 1998. As explained above, the only issue on validity is bad faith and I do not believe it is necessary to resolve the dispute on actual ownership in order to come to a conclusion on that point. In addition, the issue of ownership potentially affects third parties such as Mr Upton, Mr Ted Turner and Mr Wisefield but none of them was a party to the action before me. However the issue of ownership is relevant to the Defendant’s claim for an account, so it needs to be considered at some point, and since both parties proceeded on the basis it was relevant to bad faith I shall consider it now.

Legal context

[85]Both sides relied on Byford v Oliver

[2003] FSR 39

, a decision of Laddie J. In that case ss 3(6) and 5(4)(a) of the Trade Marks Act 1994 were in issue (ie bad faith and prior rights) and it was also a dispute between past and present members of a band (in that case, called Saxon) as to ownership of trade marks consisting of the band’s name. In that case, the mark was registered in the names of individuals (Messrs Dawson and Oliver) who had left SAXON some years before they applied for the trade mark; the band had carried on using the name SAXON after their departure; and the intention of Messrs Dawson and Oliver was to use their registration to prevent the current incarnation of the band using its own name. In the key paragraphs, which were accepted by both sides as being correct, Laddie J held as follows: 25 Absent special facts such as existed in Burchell , the rights and obligations which arise when a group of musicians, performing in a band as a partnership, split up can be explained as follows. It is convenient to start by considering the position when two, entirely unrelated bands perform under the same name. The first performs from, say, 1990 to 1995 and the second performs from 2000 onwards. Each will generate its own goodwill in the name under which it performs. If, at the time that the second band starts to perform, the reputation and goodwill of the first band still exists and has not evaporated with the passage of time (see Ad-Lib Club Ltd v Granville [1972] R.P.C. 673 ) or been abandoned (see Star Industrial Co Ltd v Yap Kwee Kor [1976] F.S.R. 256 ) it is likely to be able to sue in passing off to prevent the second group from performing under the same name (see Sutherland v V2 Music

[2002] EWHC 14 (Ch)

; [2002] E.M.L.R. 28). On the other hand, if the goodwill has disappeared or been abandoned or if the first band acquiesces in the second band's activities, the latter band will be able to continue to perform without interference. Furthermore, whatever the relationship between the first and second bands, the latter will acquire separate rights in the goodwill it generates which can be used against third parties (see Dent v Turpin and Parker & Son (Reading) Ltd v Parker [1965] R.P.C. 323 ). If the first band is a partnership, the goodwill and rights in the name are owned by the partnership, not the individual members, and if the second band were to be sued, such proceedings would have to be brought by or on behalf of the partnership. 26 The position is no different if the two bands contain common members. If, as here, they are partnerships at will which are dissolved when one or more partners leave, they are two separate legal entities. This is not affected by the fact that some, even a majority, of the partners in the first band become members of the second. A properly advised band could avoid the problem that this might cause by entering into a partnership agreement which expressly provides for the partnership to continue on the departure of one or more members and which expressly confirms the rights of the continuing and expressly limits the rights of departing partners to make use of the partnership name and goodwill. This is now commonplace in the partnership deed for solicitors' practices.

[86]Laddie J went on to hold that the goodwill in the name SAXON was an asset of the relevant partnership (as envisaged in the last sentence of the extract from paragraph [25] of his judgment) and was not something which was owned by either Mr Dawson or Mr Oliver individually. In any event Mr Dawson had left the band 12 years before the filing of the trade mark application, and he had abandoned any interest in that goodwill. It was more difficult to say that Mr Oliver had abandoned his interest since only 3 years had elapsed. However Laddie J held that the use of the mark in question could still be prevented under s 5(4)(a) for two reasons. In particular its use could be prevented by either the current incarnation of the SAXON band because this was, he found, the sole owner of recent goodwill; or by any administrator appointed by the former partnership members insofar as there was any residual goodwill owned by the original band.

[87]In Byford Laddie J also held that the mark had been applied for in bad faith, but neither side relied on that aspect of the decision.

[88]Both sides also relied on Gill v Frankie Goes to Hollywood Ltd, [2008] ETMR 4, a decision of OHIM’s Opposition Division. The facts in that case were similar to Byford v Oliver, in that an ex member of the band (Holly Johnson), who had left the band (Frankie Goes to Hollywood) in 1987 to pursue solo projects, applied in April 2004 for a trade mark for the name. The Opposition Division applied the approach set out in Byford v Oliver and came to a similar conclusion. To be precise, it accepted that the opponents were acting on behalf of the original partnership and came to the conclusion that the mark applied for was invalid pursuant to s 5(4)(a) of the UK Act and Art 8(1)(b) and (4) CTMR. This takes matters no further forward than Byford v Oliver.

[89]Next the Claimant relied on Williams and Williams v Canaries Seaschool SLU (Club Sail trade marks)

[2010] RPC 32

(Geoffrey Hobbs QC) for the proposition that the “last man standing” becomes solely entitled to goodwill. However I note that this phrase was used in relation to members of an unincorporated association which was described as an “alliance”.

[90]Club Sail was cited and followed in a decision handed down after the trial in this case, and to which I drew to the parties’ attention (Burdon v Steel, O-369-13, Geoffrey Hobbs QC). I did so because Mr Hobbs’s comments in relation to the “last man standing” argument in Burdon v Steel appeared to me to be relevant to the Claimant’s argument on Club Sail as recorded above. Both parties made further submissions as a result, for which I am grateful.

[91]Burdon v Steel was a dispute between members of another well-known band called The Animals. Like the present case, the history of the band was a complicated one. One important factual point to notice is that The Animals split up for the third and last time as long ago as 1983, and successor bands formed by original members used different names, such as “Eric Burdon and the Animals”, “Animals II”, and “Animals and Friends”. What happened next was that one of the original band members (Mr John Steel, the drummer) applied for a trade mark consisting of the words “The Animals” on 11 February 2004, and another band member (Mr Eric Burdon, the vocalist) opposed it under both s 3(6) and s 5(4)(a) of the 1994 Act.

[92]The objection to registration under s 3(6) - ie bad faith – failed at first instance and this was not challenged on appeal. However the objection to registration under s 5(4)(a) – ie prior rights - succeeded on appeal. Mr Hobbs said this in relation to the latter attack at [33], my emphasis: 33. It was, as I have said, open to the opponent as one of ‘the last men standing’ to invoke the law of passing off for the protection of the goodwill and reputation to which they were collectively entitled. The fact that the applicant was also 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 trade mark for live and recorded performances. The evidence on file does not show that he was free by virtue of devolution or dissipation or on the basis of any relevant authorisation or consent to apply for registration of the trade mark in this own name.”

[93]The first underlined sentence has to be read in the light of the finding at paragraph [7] of the same case that the group “was an unincorporated association of individuals with no contractual or other arrangements governing the relationship between and among its members”. Moreover, all of the members of The Animals had had equal status when it split up in 1983, so none of the members of this unincorporated association had any more right to the name than any other member thereof. In the present case, it was common ground that the First and Second Wishbone Ashes were partnerships and neither side suggested that any incarnation of the band was an unincorporated association. In addition, the Claimant was the only person still in the Wishbone Ash band as at February 1998 since the others had all quit. For both of these reasons I accept that the logic of the first underlined sentence does not apply to the issue of ownership in the present case.

[94]The second underlined sentence of Burdon envisages the possibility that ownership of goodwill in The Animals might have changed between 1983 and 2004 by virtue of “devolution or dissipation” of the UK goodwill and reputation or on the basis of authorisation or consent to file the trade mark. The Claimant submitted that a successor band could “call itself by the original name to a degree effective to displace the goodwill of a previous incarnation”. It seems to me that whilst this argument might run in a case where the goodwill generated by the previous incarnation is small or even negligible relative to the goodwill generated by the new incarnation, it is a difficult argument to run in a case such as the present where a substantial part of the goodwill in “Wishbone Ash” arises in the goodwill generated by the band during its 1970s heyday. I note that this argument also failed in Burdon, and I say no more about it.

[95]As regards acquiescence, the Defendant relied on the well-known case of Habib Bank Limited v Habib Bank AG Zurich

[1982] RPC 1

, CA. The Claimant did not dispute that this set out the applicable approach to acquiescence.

[96]Neither side relied on Fisher v Brooker

[2009] FSR 25

, HL, and in my view they were right not to do so. Fisher was not a case where one party had stopped using a name, then stood by and watched others build up goodwill therein. Instead that was a case about a future right to royalties in the Procul Harum song, “A Whiter Shade of Pale”, for as long as the work remained subject to copyright protection.

Analysis

[97]The Claimant’s analysis was that the goodwill generated by the First Wishbone Ash in the name had transferred to the Second Wishbone Ash, who had continued to generate that goodwill; and that such goodwill had subsequently been transferred to the First Limited Company. However, upon the dissolution of the First Limited Company on 16 February 1993, that goodwill had all been destroyed. In support of that last proposition he relied on Ultraframe v Fielding

[2005] EWHC 1638

at 1877-1880 and Star Industrial v Yap Kwee Kor

[1976] FSR 256

. The Claimant concluded that the only goodwill in the name Wishbone Ash as at February 1998 was the goodwill which the Claimant had generated since 1994.

[98]The Defendant’s analysis was as follows. The First Wishbone Ash was a partnership which had been dissolved, but never wound up. The goodwill in the name Wishbone Ash generated by that partnership up to 1974 had never disappeared or been abandoned: on the contrary, it was a major reason why both the Claimant’s and indeed the Defendant’s band emphasised their links to the original 1970s lineup and its songs.

[99]I do not accept either analysis for the following reasons.a. Mr Ted Turner’s evidence in cross-examination showed that he believed goodwill in the name had been transferred from the First Wishbone Ash to the Second Wishbone Ash. He was the only person adversely affected by the transfer, and I found that the reason he gave for this view (ie the fact that the other 3 members were common to both lineups, and they had a 75% say) was convincing. In general this is a very common type of arrangement: see Sebastian, The Law of Trade Marks, as applied in Viper Trade Mark, O-130-09.

b. In any event, any claim which might have been made by or on behalf of the First Wishbone Ash partnership which dissolved in 1974 must have been lost by February 1998 in the light of the 24 years of acquiescence by that partnership in the use of that name by the subsequent band lineups. The same is true of any rights possessed by the Second Wishbone Ash partnership which dissolved in 1981, 17 years before 1998. In each case the members of the partnership who continued in the band were obviously content to do so, and the members of the partnership who did not continue with the band did nothing to stop the band continuing under the same name.

c. Moreover the Defendant’s argument that the relevant goodwill in 1998 was still owned by a partnership which had dissolved in 1974 was inconsistent with its case on bad faith. On the basis of Byford v Oliver, the Claimant should not have been asking the individual members of the First Wishbone Ash for their consent to his application for a trade mark in 1998. He should instead have been asking that an administrator was appointed for the dissolved partnership, and asking that administrator for such permission on behalf of the dissolved partnership. On this line of argument, the Defendant would presumably have needed to ask such an administrator for permission to call his own band Martin Turner’s Wishbone Ash in 2004. The reality is that none of these scenarios is at all realistic. Any rights owned by the dissolved partnerships had long since gone.

d. As stated above I do not accept that any rights of ownership of goodwill in the name Wishbone Ash were transferred into the First Limited Company. There was no evidence of this, other than the fact it handled the band’s day to day expenses and as stated above this does not necessarily imply or require any transfer of ownership of goodwill. In addition the (admittedly brief) company documents which I have seen contained no reference to First Limited Company’s alleged ownership of this valuable asset.

e. Nor do I accept that the dissolution of the First Limited Company must have destroyed the goodwill in the name Wishbone Ash even if (contrary to my judgment) it did own that goodwill. The question is whether the goodwill has evaporated or been abandoned, not whether there is a mere cessation of use: see Laddie J in Sutherland v V2 Music, already cited above,at [11]-[21]. In any event, all that actually happened here was that the First Limited Company stopped using the name once it was dissolved. The band did not stop using the name, far less abandon it.

[100]The case is a paradigm example of the sorts of difficulties which can arise where there is no written (or indeed any) agreement relating to ownership of the name. The situation is complicated still further by the fact that only the First Wishbone Ash, the Second Wishbone Ash, and the First Reunion Wishbone Ash were clearly partnerships, and neither side relies on the First Reunion Wishbone Ash. Moreover the First Reunion Wishbone Ash partnership had ceased to exist in 1991, which is 7 years before 1998, and the members of that partnership had acquiesced in the developments since that date.

[101]In my judgment the sole owner of the goodwill in the name Wishbone Ash as at February 1998 was the Claimant. I reach this conclusion by dismissing all of the other possibilities advanced by the parties, for the reasons given above, leaving this as the most logical. It is not as simple as saying that that the Claimant was the “last man standing”. It is the combination of the Claimant’s position in February 1998 plus the point that all other possible contenders for ownership of that goodwill had, since at least 1994 if not before, acquiesced in that position. (b). Has the Defendant used, in the course of trade, a sign which is identical with or similar to WISHBONE ASH?

[102]I reproduce an example of the Defendant’s use of its marks below. This particular example uses both Martin Turner’s Wishbone Ash and www.wishboneash.co.uk. It was put to both the Defendant and to his booking agent Mr Mackay in cross-examination. Neither the Defendant nor Mr Mackay said this was an unfair or unrepresentative example of the Defendant’s use of its signs.

[103]Here the domain name is being used in normal advertising. The use of the domain name in the specific context of the Defendant’s website raises different issues and this is considered separately below.

Are the signs identical?

[104]The test as to whether a sign is identical was set out by the CJEU in

Case C-291/00

LTJ Diffusion SA v Sadas Vertbaudet SA

[2003] ECR I-2799

. A mark is "identical" to a registered mark where it reproduces all the constituent parts of the registered mark without any alterations or additions and where any differences are so slight as to be imperceptible to the average consumer.

[105]The argument under Art 9(1)(a) CTMR was not seriously pursued. I find that neither “Martin Turner’s Wishbone Ash” nor www.wishboneash.co.uk is identical to the trade mark as registered under this test.

Are the signs similar?

[106]The sign “Martin Turner’s Wishbone Ash” contains the whole of the registered trade mark in recognisable form, as does the domain name www.wishboneash.co.uk. Once again it was not seriously disputed that both signs were similar to the trade mark, and I so find. (c). Does there exist, because of use by the Defendant of a sign or signs similar to WISHBONE ASH, a likelihood of confusion on the part of the public?

[107]The only issue on infringement pursuant to Art 9(1)(b) CTMR is whether the Defendant’s use has given rise to a likelihood of confusion on the part of the public. The law here is well known and is summarised by Arnold J in Interflora v Marks & Spencer plc

[2013] EWHC 1291 (Ch)

at [183]-[185]; see also [174]-[175] re the need for a contextual assessment and the relevant date. I shall apply the principles which are set out there.

[108]As pointed out in Aveda Corp v Dabur India

[2013] EWHC 589 (Ch)

at [18], the question is whether there is a likelihood of confusion, not whether there is actual confusion. Moreover actual confusion may be due to matters other than a comparison of the marks. I turn to the evidence relied on by the Claimant in relation to actual confusion.

Mrs Bowden’s evidence

[109]Mrs Bowden explained that the Claimant’s band had given 2 performances at the music venue for which she was responsible. The first was in 2007 and sold 599 tickets, one short of capacity. The second took place in 2009 and only 383 tickets were sold. In addition, she received numerous telephone calls as the show drew near asking whether her venue was showing the genuine Wishbone Ash, and/or which Wishbone Ash would be performing. She had never encountered an “uproar of this nature ahead of a show” in her 8 years of experience, and she was not happy about being put in a position where she felt she was being questioned as to whether her venue was putting on a genuine act. She believed that this was all due to the fact that in 2009 Martin Turner’s Wishbone Ash had played a venue less than a mile away, a week or two after the Claimant’s band performed. She added that the fans who attended were people in their 20s and 30s, who would not have been old enough to see the original 1970s lineup.

[110]The mere fact that the Claimant’s ticket sales reduced in 2009 at this venue does not establish confusion. For instance it might be due to the recession, or due to the fact that the two bands are splitting the available audience for this type of music. For the same reasons, I did not find Mr Nye’s more detailed evidence about the mere drop in sales of much assistance.

[111]However it was not disputed that in this instance the Defendant’s band was locally promoted using the name Martin Turner’s Wishbone Ash. As pointed out above the Defendant took steps to ensure that this always happened, and the Defendant did not suggest that this show was one of the very few exceptions. Hence I find that the qualifier was not enough to avoid the actual confusion which Mrs Bowden experienced.

[112]In addition it was not suggested that Mrs Bowden’s experience was, or was likely to be, in any way atypical or unusual. In my view actual confusion is likely to occur, and to occur because of the similarity in names, wherever the bands are competing for the same audience.

Mr Crabtree’s evidence

[113]Mr Crabtree offers drumming lessons. On 27 October 2012 he received an email from a Spanish student, Diego. Diego had seen an advertisement for “Martin Turner’s Wishbone Ash” in Spain, but the “Martin Turner’s” part was in small type and Diego had missed it. Diego had thought it was the Claimant’s band. Mr Crabtree had also come across other instances whereby the Defendant’s band had been listed in third party websites simply as “Wishbone Ash”.

Mr Fox’s evidence

[114]Mr Fox gave examples of a number of weblinks, and one Amazon review of the Defendant’s book, which in his view demonstrated(a) that the qualifier “Martin Turner’s” was frequently omitted from articles relating to the Defendant’s band and

(b) that as a result there was confusion. He received some of these via various web alerts he had set up, but he also gave evidence of two incidents which had involved him personally.

[115]The first incident happened on or about 12 December 2012. A colleague of his at work had drawn his attention to an advertised appearance of Wishbone Ash at the HRH Prog Festival in Rotherham. Mr Fox did not see the advertisement, but he did check the HRH website and saw that “Wishbone Ash” was listed. It turned out that it was the Defendant’s band. Mr Fox also discovered 2 other web links relating to the concert, one of which mentioned Martin Turner’s Wishbone Ash and the other one mentioning just Wishbone Ash.

[116]The second incident happened on 29 May 2013. A colleague of his asked him if he was going to see Wishbone Ash at Rossington that year. Mr Fox checked a newsletter from the Rossington Parish Council, and this did refer to “Wishbone Ash”, but he then found out from the Defendant’s website that it was his band.

Ms Goldsmith’s evidence

[117]Ms Goldsmith said that her husband Richard had been browsing the internet on 15th March 2013, and that in the course of doing so had come across an entry on the website www.songkick.com saying that “Wishbone Ash” was playing at a venue called Viper Alley in Lincolnshire, Illinois. She knew this was not the Claimant’s band since she was the publicist for the Claimant’s band. The entry related to the Defendant’s band.

Conclusions

[118]As is apparent from the above, most of the evidence of confusion seems to relate to instances where the qualifier has been omitted. The significance is that once one drops “Martin Turner’s”, then the marks are identical and confusion is highly likely.

[119]Nonetheless I am in no doubt that the use of Martin Turner’s Wishbone Ash involves a clear likelihood of confusion with the registered mark. This is for the following reasons:a. First, the sign is not just similar but highly similar to the mark as registered. In addition the Defendant’s sign is being used in relation to services which are identical.

b. Secondly, the average consumer is not deemed to have any special knowledge of the Wishbone Ash band, or its members, or its changing lineups over time. He (or she) is merely a consumer of the goods or services in question. Moreover there is very little evidence as to the scale of Defendant’s trade under his own name prior to 2004/2005 (ie when he started the use complained of). The Defendant may have been well known to some fans of the band, but his reputation under his own name at that time so far as the average consumer was concerned was very limited. For both of these reasons the qualifier “Martin Turner’s” will have little or no meaning to the average consumer. Hence there is no reason in principle why the qualifier should prevent a likelihood of confusion. The domain name has no such qualifier at all.

c. Thirdly the Claimant’s mark has a highly distinctive character, both per se and because of the use that has been made of it. There are not many bands which achieved widespread recognition in the 1970s and were still performing as at 2004/2005. As a result the words “Wishbone Ash” have a strong reputation.

d. Fourthly Mrs Bowden’s evidence demonstrates that actual confusion arises even when the identifier is used. I can see no logical reason for this other than the similarity in the names. That said, it is not surprising that the qualifier keeps being dropped by third parties. These third parties are dropping the part of the Defendant’s mark which they do not think is important, and keeping the part of the Defendant’s mark which they know will pull in the crowds.

e. Fifthly the overall impression conveyed by both of the Defendant’s marks is dominated by the “Wishbone Ash” component although of course I do not make the comparison on the basis of this alone.

Issues specific to the domain name

[120]The use of the domain name in normal advertising, such as that shown above, also infringes. The first, second, third, and fifth reasons given above in relation to the term Martin Turner’s Wishbone Ash apply.

[121]I was not taken to any specific examples of the use of the domain name in the context of the Defendant’s website, although it will be used as part of any given web page address. Instead both sides approached this part of the case at a higher level of generality. The Claimant explained that he did not object to use of the domain name in the context of the Defendant’s website for so long as the content of the Defendant’s website was restricted to matters of historical background (eg the history of the band Wishbone Ash and the Defendant’s role therein, etc). This was the position up to 2004. However the Claimant did object to the use of the domain name, and the website, to promote the Defendant’s band. This was why he had issued his complaint with Nominet in 2004, and not before.

[122]In my judgment the Claimant was right to adopt this approach. This is not a case about internet keywords, or appearance in search results, but on application of the law as it now stands in relation thereto the former type of use would not in my view infringe. This is because reasonably well-informed and reasonably observant internet users would readily understand that such use related to matters of historical fact, and not to the trade mark proprietor. See the discussion of the Court of Justice’s jurisprudence in this difficult area by Arnold J in Interflora at [225]-[267]. Conversely I accept that use of the domain name as part of a website or web address promoting the Defendant’s band amounts to use of the domain name to promote the Defendant’s band. This is infringing use in the same way as the use of the domain name in the poster shown above infringes. (d). Is there a reputation in the Community in WISHBONE ASH?

[123]This was not disputed. The band has toured extensively throughout the Community in all of its incarnations as well as selling many records in the Community. (e). Has the Defendant’s use of his sign taken unfair advantage of, or been detrimental to, the distinctive character or repute of WISHBONE ASH?

[124]The law here was summarised by Arnold J in Interflora at [186]-[193]. I shall apply the principles which are set out there.

[125]I find that the use of both of the Defendant’s signs gives rise to a link between these signs and the trade mark in the mind of the average consumer. It follows that the first two requirements of this head of liability are satisfied. So far as the third requirement of this head of liability is concerned, the Claimant need only show one type of 3 kinds of injury, often known as “dilution”, “tarnishing”, and “free-riding”: see L’Oreal v Bellure

[2009] ECR I-5185

[126]In relation to “dilution” (ie detriment to the distinctive character of the mark), the law is currently unclear as to whether this requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the mark is registered. At the moment it seems not: see the General Court’s decision in Wolf Head (T-570/10), considered in B Sky B v Microsoft

[2013] EWHC 1826 (Ch)

at [189]. In my view Mrs Bowden’s evidence in any event demonstrates a change in the economic behaviour of the average consumer of the services for which the mark is registered. Moreover, given my findings on confusion it is difficult to see why dilution would not be established anyway. Essentially there used to be one band with the name Wishbone Ash, and now (given my findings about the qualifier) there are two. It seems to me inevitable that the Defendant’s activities will cause detriment to the distinctive character of the Wishbone Ash mark. I find that the Claimant has established this kind of injury.

[127]So far as tarnishing (ie detriment to the repute of the trade mark) is concerned, it was suggested that the Defendant’s band was of lesser musical quality than the Claimant’s band; that it cheapened the brand by playing smaller venues and/or for reduced prices; and that it had harmed relations with promoters. I am sure that the Claimant sincerely believes in these complaints but they were strongly disputed by the Defendant and were not substantiated by the evidence. I reject that part of the Claimant’s case.

[128]So far as “free-riding” (ie taking unfair advantage of the distinctive character and repute of the trade mark) is concerned, it seems to me that the Defendant had obtained a clear advantage by riding on the coat tails of the mark in order to benefit from its power of attraction.

[129]The Defendant can still escape liability under Art 9(2) by demonstrating “due cause”. This defence has a limited scope outside internet key words generally, and the case law demonstrates that it is particularly difficult in relation to goods which are “imitations of the goods of the proprietor of those marks”: see the Court of Justice’s decision in Interflora(CJEU) [2012] ETMR 1, at [90]. The Defendant would not accept that his band is an “imitation” of the Claimant’s band, but equally it is difficult to see why he has “due cause” to use “Martin Turner’s Wishbone Ash” as its name.

[130]Both he, and his booking agent Mr Mackay, were cross-examined about the choice of name. It was put to the Defendant and Mr Mackay that they could call the band “Martin Turner’s Band”, or use longer terms such as “Martin Turner Band plays Wishbone Ash music”, or “Martin Turner plays songs of Wishbone Ash”. It was implicit in this cross-examination, as I pointed out to the Claimant’s trade mark attorney at the time, that the Claimant did not object to these alternatives, and upon taking instructions he agreed that the Claimant did not object. The Defendant agreed he could use these names but did not want to do so he thought they made his band sound like a tribute act. Mr Mackay added that using the “Wishbone Ash” part helped to attract an audience.

[131]Furthermore given the Defendant’s case that the qualifier is sufficiently strong to prevent confusion with “Wishbone Ash” arising in the first place, it is difficult see why the words “Martin Turner” are not strong enough to use as a name for his band. The Defendant’s logic was that people were coming to see him because he was widely recognised as the creative force behind the original Wishbone Ash, hence using his name should attract those people.

[132]I find that the Defendant’s use of Martin Turner’s Wishbone Ash was without due cause, as was the use of the domain name to market his band. I see no reason why the use of the domain name as part of webpages dealing with historical background of the band should cause any type of injury to the Claimant’s mark, and I also find that in any event the Defendant’s previous historical involvement in the band will amount to due cause for this type of use. (f). Is the Claimant liable to account to the Defendant for use made by him of goodwill attaching to the name WISHBONE ASH?

[133]I have set out the terms of the account which is sought above. In the course of argument, two other possibilities were mooted. One was an account of all profits made by the Claimant by reason of his use of the name Wishbone Ash since 1969, and another was an account of all profits made by the Claimant by reason of his use of the name Wishbone Ash since 1994. This was on the basis of the Defendant’s argument that the Defendant owned a share of the goodwill in the name Wishbone Ash by virtue of his participation in the First Wishbone Ash.

[134]I refuse this application for an account for the following reasons. 1. First, it is barred by acquiescence. The claim for an account was first made after these proceedings commenced, in a Defence dated 20th February 2013. This is almost 40 years after the end of the First Wishbone Ash. At no point in that long time period did the Defendant take any steps at all to obtain financial compensation for the Claimant’s activities. 2. Secondly, I have found that by February 1998 the Claimant was the sole owner of the goodwill in the Wishbone Ash mark. The situation did not change thereafter. Hence the application for an account would fail in any event. 3. Thirdly, any such claim would (on the strength of Byford v Oliver) not be an application which the Defendant could make in his own name even if the Defendant’s analysis were correct. It should have been made by an administrator for the dissolved partnership. Hence the application is made by the wrong party. I add that on this basis the Defendant would presumably have to account to that administrator for his own use as well.

Conclusion

[135]I dismiss the Defendant’s attack on the validity of the trade mark, and his claim for an account. I find that the Claimant’s Community Trade Mark is valid and has been infringed by the Defendant pursuant to each of Arts 9(1)(b) and 9(1)(c) CTMR.