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Bulletins Story:
WHEN TWO TRIBES GO TO (TRADE MARK) WAR - FRANKIE GOES TO
HOLLYWOOD TRADEMARK APPLICATION
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Date: 12.06.2007
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An application by Holly Johnson, the former front man of
controversial 1980’s popsters Frankie Goes To Hollywood, to
register FRANKIE GOES TO HOLLYWOOD as a trade mark has been
rejected following opposition by the band’s other former
members.
The Facts
In April 2004 Mr Johnson applied to register FRANKIE GOES TO
HOLLYWOOD in respect of a range of goods and services in classes 9,
16, 25 and 41. He did so without notifying or seeking the consent
of the other members of the band, Paul Rutherford, Brian Nash, Mark
O'Toole and Peter Gill who, later that year, filed an opposition to
his application under the following sections of the Trade Marks Act
1994:
- Section 3(6) – bad faith – on the basis that the four opponents
were original band members, that the rights in the name Frankie
Goes To Hollywood are held jointly by all five members and that, by
applying for registration without the others' consent, Johnson's
application was in bad faith.
- Section 5(4)(a) – passing-off – on the basis that use of the
trade mark, if granted, would be liable to be prevented by the laws
of passing off or, in other words, that the goodwill jointly owned
by the opponents in the band's name would be in direct conflict
with the granting of trade mark rights solely to Mr
Johnson.
The Decision
The Hearing Officer of the Intellectual Property Office
(www.ipo.gov.uk) upheld
both grounds of opposition and rejected Mr Johnson’s
application.
As to Section 3(6) (bad faith), the Hearing Officer noted that
"bad faith" includes dishonesty and dealings which fall short of
the standards of acceptable commercial behaviour. This test
requires a combination of the subjective and the objective, ie
knowledge that what was being done would be regarded as dishonest
by honest people, akin to "conscious impropriety". The Hearing
Officer made particular note of the fact that Mr Johnson had made
the application without the knowledge of the other band members and
sought to monopolise the name to their exclusion merely to
interfere with their rights.
As to Section 5(4)(a) (passing-off), the Hearing Officer found
that the former band members had the requisite goodwill and
reputation in the name Frankie Goes To Hollywood and that use of
that name by Mr Johnson would amount to a misrepresentation from
which damage would inevitably flow.
Conclusion
This case highlights the importance of trade marks in the
management and control of brand and reputation issues for bands.
Wherever possible we would recommend the following:
- Bands should register trade marks sooner rather than later.
- They should ensure that all appropriate parties (band members,
managers and record companies etc) agree as to the ownership and
use of the trade mark.
- On dissolution of the band, the ownership and use of the band's
name and goodwill and, in particular, of any trade marks should be
clearly set out and agreed by all concerned.
Tom
Cowling
Music /
Advertising
& Marketing
See Also:
SPLINTER BANDS TRADING AS A HERITAGE ACT: ALAN WILLIAMS
ENTERTAINMENT v HURD, BINES AND BREWER
LINKIN PARK TRADE MARK APPLICATION FOR POSTERS
REFUSED
BYFORD v OLIVER AND DAWSON: HIGH COURT DECIDES SAXON NAME
DISPUTE
HIGH COURT BRINGS AN OASIS OF CALM TO GROUP
DISPUTE
POPSTARS LOSE THEIR LIBERTY: SUTHERLAND v V2 MUSIC
REEF FAIL TO OBTAIN REGISTRATION OF BAND NAME AS TRADE
MARK
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