On 24 October 2013, Andrew Powell, guitarist of the British rock band Wishbone Ash, succeeded in a trade mark infringement action against former band member Martin Turner who had been performing under the name “Martin Turner’s Wishbone Ash”. In the ruling, the IP Enterprise Court confirmed that a community trade mark protecting a band name will likely be infringed if a band member seeks to use a “highly similar” name to promote a different group (section 9(1) of the Community Trade Mark Regulation No. 207/2009 – “CTMR”). See Powell v Turner [2013] EWHC 3242 (IPEC) (24 October 2013).
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In the beginning
Turner was a founding member of Wishbone Ash and had played with the band during a particularly successful period from 1969-1981. Powell applied to register a community word mark for the name “Wishbone Ash” in February 1998 at a time when the other original band members including Turner had “all quit”. The mark was registered in a number of categories including Class 41(entertainment services). Reg. No. EU000742684. Powell and Turner also each decided to register band domain names (wishboneash.com and wishboneash.co.uk) on 15 March and 15 June 1998 respectively. By 2004 Turner had left the band and formed a new group “Martin Turner’s Wishbone Ash”. Both Turner and Powell continued to play and record the original band’s songs with their separate groups using the Wishbone Ash name. Although there were several attempts to reunite the original Wishbone Ash line-up, the pair continued to disagree on their respective rights to use the name. On 22 November 2004, Powell also brought Nominet proceedings to dispute Turner’s domain name. The complaint was rejected on the grounds that Powell had not demonstrated Turner’s registration was “abusive”.
And then came the claim: Andrew Powell v. Martin Turner
On 25 May 2012, Powell brought a trade mark infringement action challenging Turner’s use of the name “Martin Turner’s Wishbone Ash” and the domain name wishboneash.co.uk. Powell argued that the identical or very similar use of the name in relation to identical entertainment services was without due cause and would likely cause confusion (sections 9(1)(a), (b) and (c) CTMR). Turner sought to revoke Powell’s CTM on the basis of bad faith (Article 52(1)(b) CTMR). He argued that Powell applied for the mark in order to benefit exclusively from the band name “without any reasonable belief that he was properly entitled to the same”. Turner also applied for a share of the profits reflecting his share of the goodwill attaching to the band name or to 5% interest per annum on such a share.
The trademark and domain decision
In relation to validity, the Court held that there was no evidence to suggest the mark had been registered in bad faith. Powell applied for the mark to protect the band name against third parties. The other band members had not sought to assert any claim or restrict Powell’s use of the name “Wishbone Ash”. See Powell v Turner [2013] EWHC 3242 (IPEC) (24 October 2013) . Turner’s use of a “highly similar” name also infringed Powell’s community mark. “Martin Turner’s Wishbone Ash” and the wishboneash.co.uk domain name contained the whole of Powell’s registered mark in recognizable form. Witness evidence from concert promoters, venues and internet users demonstrated that the use of a similar distinctive name for identical services was “highly likely” to confuse the public (sections 9(1)(a) and (b) CTMR). It was found that the qualifier “Martin Turner’s” was frequently omitted from advertisements promoting Turner’s upcoming shows and that the average consumer may not be able to differentiate between Powell and Turner’s separate groups. It was decided that Turner was gaining a clear advantage “riding on the coat tails” of Powell’s mark and his use was without due cause. Turner’s application for an account was also barred by acquiescence. The Court found that Turner had not asserted or at any point agreed the ownership of goodwill in the name with Powell. As Powell was the last surviving member of the original band and the former members had not taken steps to prevent Powell’s continuing use of the “Wishbone Ash” name in 1998, when the mark was registered, the court found that Powell was the sole owner of the goodwill relating to the name. Turner’s website wishboneash.co.uk indicates that he is likely to appeal the decision. See Andy Powell Fails to Stop Band Mates from Using the Name Wishbone Ash, Wishboneash.co.uk, Oct. 25, 2013. This follows a line of cases such as Byford v Oliver & Dawson (Saxon); Gill v Frankie Goes to Hollywood; and Burdon v Steel (The Animals) which illustrate the importance of formally agreeing the ownership of band names and other intellectual property rights early on. A clear agreement would go a long way to prevent trade mark and goodwill tussles arising within groups, particularly with bands of some longevity where some original band members have left.
This article was prepared by Lâle Kemal (lale.kemal@nortonrosefulbright.com / +44 20 7444 2313) of Norton Rose Fulbright United Kingdom’s Intellectual property group.
