The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra)

A trade mark is descriptive where the average consumer immediately recognises it as designating a characteristic of the goods or services. A performer’s name may describe the contents of a CD or DVD rather than indicate trade origin. Acquired distinctiveness must be proved in every relevant Member State where the mark is descriptive, and the burden rests on the proprietor. Similar descriptive names may nevertheless infringe if the mark is assumed to be valid and the statutory conditions are met. A claimed dramatic-work format must be fixed in a particular performance and possess sufficient certainty and unity.

The claimant operated a musical group under the name “The Ukulele Orchestra of Great Britain” and owned a Community trade mark for that name. The defendants operated a different group under the name “The United Kingdom Ukulele Orchestra”. The claimant alleged trade mark infringement, passing off and copyright infringement in two dramatic works. The second defendant counterclaimed for invalidity of the mark on absolute grounds and relied on the descriptive-use defence.

The court also determined an interlocutory strike-out application concerning redacted press articles and considered the scope of relief that would have been available if the mark had been valid.

1. Strike-out application. The application to strike out the defence was dismissed. The redactions did not prevent a fair trial because the full articles were before the court. Speculation that other documents might have been altered was insufficient. It would also have been wrong to find that a witness was lying without hearing his evidence.
2. Invalidity. The mark was descriptive under art.7(1)(c) of the CTM Regulation for concert and orchestra services and for CDs and DVDs. The average English-speaking consumer would immediately understand it as describing an orchestra of ukulele players from Great Britain. “Orchestra” could describe musicians playing the same instrument. The mark therefore lacked distinctive character, subject to acquired distinctiveness.
3. A performer’s name does not necessarily indicate the trade origin of a CD or DVD embodying the performance. The evidence did not establish that consumers expected the goods to be licensed by the claimant. The mark had acquired distinctiveness for concert services in the UK and Germany, but the proprietor failed to prove acquired distinctiveness in every relevant Member State, including Malta, Cyprus, Denmark and Luxembourg. The burden remained on the proprietor.
4. Infringement if valid. The competing name was visually, aurally and conceptually similar. The evidence established a likelihood of confusion under art.9(1)(b). It would also have infringed art.9(1)(c): the mark had a reputation in the UK and Germany, the sign created a link, and its use was liable to cause detriment or unfair advantage. The descriptive-use defence under art.12(b) failed because the defendants knew, or ought reasonably to have known, of the risk of objection and had acted outside honest practices.
5. Passing off. The claimant had goodwill and a secondary meaning in England and Wales. The defendants’ use of the competing name misrepresented a common source or commercial connection and caused damage to that goodwill. The passing-off claim against the second defendant succeeded. The claim against the first defendant based on the domain name failed.
6. Copyright. Assuming that a musical group’s performance could constitute a dramatic work, copyright required fixation under s.3(2) of the Copyright, Designs and Patents Act 1988. The claimant’s pleaded “formats”, detached from particular recorded performances, lacked certainty and unity. No copyright subsisted in the works relied upon, so the copyright claim failed.
7. The court concluded that the trade mark was invalidly registered, although it would have been infringed if valid. The passing-off claim succeeded and the copyright claim was dismissed.