Facts

The name “the Rubettes” was first used by a pop band in 1974. The band was made up of Alan Williams, a vocalist and songwriter, Mick Clarke, a bass guitarist, John Richards, a drummer, Peter Arnesen, Bill Hurd and Tony Thorpe. The band’s first successful song was “Sugar Baby Love”.

Between 1974 and early 1976, the band traded through The Rubettes Ltd, in which all band members had shares. The company ceased trading in around 1977.

In April 1976, Rubettes (1976) Ltd was incorporated (the 1976 Company). Again, all band members were allotted one share. The 1976 Company provided live music events, music sales and related goods or services under the name “the Rubettes”.

By 1983, the 1976 Company was dissolved and the business of the band was carried out by Alan Williams Entertainments Ltd (AWEL). Mr Williams and his wife were the sole directors and shareholders. At this time, various iterations of the band performed and toured under the name “the Rubettes”. AWEL made the bookings and paid the expenses. Those who performed were paid a fee per performance.

In 1999, Mr Hurd set up a separate band using the name “the Rubettes”. This resulted in litigation between him and Mr Williams/AWEL, which was settled in 2002. Under the 2002 Settlement Agreement, it was agreed that from 31 December 2002 Mr Williams and AWEL would trade as “the Rubettes featuring Alan Williams”, while Mr Hurd would trade as “the Rubettes featuring Bill Hurd”.

Since then, until 2018, “the Rubettes featuring Alan Williams” involved Mr Williams, Mr Richardson and Mr Clarke. Steve Etherington, a keyboard player, joined in around 2016. The band did not always use this name and occasionally performed under the name “the Rubettes”.

In the autumn of 2018, Mr Williams told the other band members that he was moving to Australia. Since 2014, Mr Williams had gone back and forth from Australia, where his daughter lived, and had continued performing gigs in the UK.

In October 2018, Mr Clarke applied to register THE RUBETTES as a UK trade mark. The mark was registered in classes 9, 35 and 41 on 11 January 2019 (the UKTM).

At some point before 3 March 2019, Mr Clarke, Mr Richardson and Mr Etherington formed a band called “the Rubettes” using the logo shown below and, in May 2021, Mr Hurd also agreed to perform with that band:

AWEL and Mr Williams (the Claimants) issued proceedings against Mr Clarke, Mr Richardson and Mr Etherington (the Defendants), claiming that AWEL (or AWEL and Mr Williams) was the owner of goodwill in the name “the Rubettes” and in the name “the Rubettes featuring Alan Williams” (the Rubettes Names) when used in relation to live music events, merchandising, music sales and associated goods and services, and that since none of the Defendants owned any goodwill associated with the Rubettes Names, their involvement in a band using the name “the Rubettes” since late 2018 amounted to passing off. The Claimants also claimed that the UKTM was invalid as it had been applied for in bad faith.

The Defendants said that there was no agreement as to how the goodwill generated by the band should be owned and that the goodwill was therefore owned by the members of the band jointly and severally.

Decision

Passing off

The evidence showed that between 1974 and 1983 the band was run by the early companies set up for that purpose. Given that goodwill is generated by trade, Ms Pat Treacy, sitting as a Judge of the Chancery Division, found that the goodwill in “the Rubettes” name resided in the 1976 Company and that none of the individual musicians had accrued any concurrent goodwill during this period. As the 1976 Company was subsequently dissolved, the goodwill before 1983 passed to the Crown under s 654 of the Companies Act 1985.

From 1983 onwards, Ms Treacy found that AWEL, under Mr Williams, was responsible for all the band’s business arrangements, with the other band members showing no interest in promoting the band or taking on any business risk. Therefore, from 1983 onwards, AWEL had accrued goodwill in the name “the Rubettes”.

The question was whether, at any time between 1983 and 2018, either Mr Clarke or Mr Richardson had accrued any concurrent goodwill.

Mr Clarke and Mr Richardson argued that, because they had continued to perform with the band, they had built up and now owned substantial goodwill in the name “the Rubettes”. Ms Treacy disagreed, finding that there was no evidence that either of them had, while performing with the band, operated as a sole trader in such a way as to entitle them to accrue goodwill. There was no argument or evidence to show that they operated in a different way to any of the other freelance musicians who worked with AWEL under the name “the Rubettes” from time to time such as to accrue any goodwill. Both had gone through lengthy periods after 1983 when neither of them had performed with the band. They were paid a fee per performance but bore no costs. Neither of them was interested in the business of the band and acknowledged that Mr Williams bore the business risks.

Mr Richardson and Mr Clarke also argued that the 2002 Settlement Agreement had had a significant impact on the Claimants’ position because it prevented AWEL from trading as “the Rubettes”, meaning that they were only able to build up goodwill in “the Rubettes featuring Alan Williams”. The Claimants could not prevent the Defendants from using the name “the Rubettes” because they had no right to use it themselves.

Ms Treacy disagreed, finding that the mere fact of a bilateral agreement between two parties as to the way in which they would trade did not of itself mean that either party had automatically abandoned its rights against third parties in any goodwill it might own. Further, the Claimants had occasionally performed under the name “the Rubettes” after 2002, which, while it might have exposed them to a breach of contract claim by Mr Hurd, also suggested that given an opportunity (e.g., a chance to renegotiate the 2002 Agreement), they would seek to resume trading as “the Rubettes”.

Further, Ms Treacy said, there was no evidence that the Claimants had ceased to trade in 2018, despite Mr Williams moving to Australia, or that any goodwill had been abandoned. Even if the Defendants genuinely believed that this was what had happened, that belief was not founded. The Claimants had, in fact, continued to trade as previously, albeit with a new line up.

Accordingly, the Claimants had established goodwill in the Rubettes Names from at least 1983. The Defendants did not have concurrent or senior goodwill.

As for misrepresentation, the Defendants did not deny that, from autumn 2018, they had used the name “the Rubettes”. The evidence showed that they had promoted their performances as “the Rubettes” and had been involved in the creation of websites and social media accounts. They had registered various domain names, including therealrubettes.com, theofficialrubettes.com and therubettes.co.uk. A Twitter account using the Twitter handle @TheRubettes and an Instagram account called @theRubettesofficial had also been set up. Further, in October 2018, Mr Clarke had applied to register the UKTM.

The Claimants provided evidence that promotors had chosen not to proceed with bookings due to the Defendants’ activities. For example, an email from Live Promotions Events Ltd, stated “Alan the problem I can see as a UK promoter is that your former colleagues have reunited and are back on the scene … calling themselves THE RUBETTES (featuring three of the original members) … and are playing the Butlins, Warners budget circuit etc. Such issues just cause confusion … so I will pass … and wish you well. …”.

Ms Treacy said that misrepresentation was a question of fact. The evidence suggested that the use by the Defendants of “the Rubettes”, in which the Claimants had accrued goodwill, had caused both confusion and damage, leading to passing off. This was supported by the registration of domain names, social media accounts and the UKTM. It was not correct to say that just because original members of a band sought to perform together, they had a right to use the band’s name.

The passing off claim succeeded.

The UKTM

The Claimants’ case was under both s 5(4)(a) of the 1994 Act (that the Claimants were at the time of application entitled to prevent the use of the mark) and s 3(6)(a) (that the mark was applied for in bad faith).

Both parties accepted that if the Claimants succeeded on the passing off claim, then invalidity should follow under s 5(4)(a).

As for bad faith, the allegation was that Mr Clarke had applied for the UKTM to interfere with the lawful activities of the Claimants.

Ms Treacy found Mr Clarke’s evidence as to what he knew and intended unsatisfactory. She found that, at the date of the UKTM application:

• Mr Clarke was aware of the activities over many years of AWEL and Mr Williams;
• Mr Clarke did not have a genuine belief that AWEL and Mr Williams were abandoning their business in the UK;
• Mr Clarke did not tell either AWEL or Alan Williams of his plans to set up a further competing band or to register the UKTM;
• Mr Clarke had no reasonable grounds to believe that the UKTM was necessary to enable him to work or that there was any unconnected third party use against which the mark might be legitimate protection;
• once obtained, the mark was used to interfere with the activities of AWEL and Mr Williams by writing to venues working with AWEL and Mr Williams, relying on the UKTM and raising the prospect of litigation;
• Mr Clarke’s explanations of that correspondence during cross‑examination were completely new evidence; and
• the combination of that correspondence and Mr Clarke’s unconvincing evidence, combined with his failure to mention that correspondence in his written evidence, cast light on his intentions at the date of application.

Accordingly, Ms Treacy agreed with the Claimants that Mr Clarke’s motive in registering the mark was to protect his interest from unlawful usage. The application was motivated by an intent to interfere with the Claimants’ legitimate conduct and business in a context where there was no reasonable basis to believe that those interests were being abandoned. Mr Clarke’s conduct in applying for the UKTM fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the music business. Therefore, the UKTM application had been made in bad faith.

Due to the findings of passing off and bad faith, Ms Treacy found that the UKTM registration was invalid. (Alan Williams Entertainments Ltd v Mick Clarke [2022] EWHC 1798 (IPEC) (13 July 2022) — to read the judgment in full, click here).