Powell v Turner

A trade mark application is made in bad faith only where the applicant’s conduct falls below the standards of acceptable commercial behaviour. The court must assess all relevant circumstances existing when the application was filed, including the applicant’s intention and relevant third-party use.

In disputes between successive musical line-ups, goodwill belongs to the relevant partnership or legal entity unless displaced by agreement, abandonment, acquiescence or other legally effective circumstances. A departing member does not automatically retain an individual share capable of defeating the continuing band’s rights.

A highly similar band name may cause a likelihood of confusion even where it includes a personal-name qualifier. Historical use of a domain name may be permissible, but promotional use for a competing band may infringe.

The claimant, a long-standing member of the band Wishbone Ash, owned a Community trade mark for the words WISHBONE ASH. The defendant, a former member, performed under the name Martin Turner’s Wishbone Ash and used the domain name wishboneash.co.uk.

The claimant alleged infringement under Articles 9(1)(a), 9(1)(b) and 9(1)(c) of the Council Regulation (EC) No. 207/2009. The defendant challenged the mark for bad faith under Article 52(1)(b) and sought an account based on alleged shared goodwill.

The central issues were whether the application was made in bad faith, who owned the goodwill, whether the defendant’s signs caused confusion or injury to the mark, and whether an account was available.

1. Validity and bad faith. The attack on the mark’s validity was dismissed. The relevant question was the claimant’s state of mind and commercial conduct when the application was filed. The court accepted that the application was made to protect the band name from unrelated third parties, not to exclude former members. None of those members was then using the name or asserting a conflicting right. The claimant’s belief that he owned the goodwill was honestly and reasonably held. Failure to notify the other members did not itself establish bad faith.
2. Goodwill. The court applied the partnership principles discussed in Byford v Oliver [2003] FSR 39. Earlier partnerships had acquiesced for many years in the continuing use of the name. No transfer of goodwill to the first limited company was proved, and dissolution of that company did not destroy goodwill because the band continued using the name. By February 1998 the claimant was the sole owner of the goodwill. The conclusion did not follow merely from a “last man standing” rule, but from the claimant’s position together with the other possible contenders’ acquiescence.
3. Infringement. Neither sign was identical to the mark under the test in LTJ Diffusion SA v Sadas Vertbaudet SA Case C-291/00 [2003] ECR I-2799, but both were highly similar. Applying the contextual assessment described in Interflora v Marks & Spencer plc [2013] EWHC 1291 (Ch), the court found a clear likelihood of confusion under Article 9(1)(b). The qualifier “Martin Turner’s” had little significance to the average consumer, and actual confusion supported the conclusion.
4. The defendant’s signs created a link with the mark and caused dilution and free-riding under Article 9(1)(c). Tarnishment was not proved. Use of the band name and the domain name to promote the defendant’s band was without due cause. Historical use of the domain name for factual information about the band was not infringing and was supported by due cause.
5. The claim for an account was refused. It was barred by acquiescence, failed because the claimant owned the goodwill, and in any event was brought by the wrong party on the reasoning in Byford v Oliver.

The defendant’s validity challenge and claim for an account were dismissed. The mark was valid and had been infringed under Articles 9(1)(b) and 9(1)(c).