In 2004 John Steele, the former drummer of 60s rock band The Animals, applied to register the words ‘The Animals’ as a trade mark to use in relation to CDs and music recordings in class 9 and live performances in class 41 of the Nice Classification.
This was following the band’s success in the 1960s with their hit ‘the House of the Rising Sun’. This was opposed under section 5(4) (a) of the Trade Marks Act 1994 by Eric Burdon who was the group’s lead singer.
This subsection states that an application shall not be registered in the UK or is liable to be prevented “by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.”
Thus if Steele used the trade mark he could be sued by Burdon or any of the other original band members for passing off.
The hearing office concluded that no goodwill still existed, in that the goodwill the group had accrued in the 1960s had disappeared years prior to Steel’s application. This was because the group formed in 1963 and broke up in 1966 and the odd reunion and charity events and being placed in the Hollywood Rock Walk Hall of Fame in 2001 did not establish the existence of goodwill.
Accordingly his action under section 5 (4) (a) failed. Burdon appealed this decision on the basis that the office had been erroneous when deciding that no goodwill existed in the trade mark ‘The Animals’ at the time of Steel’s application. Burdon’s appeal was successful.
Geoffrey Hobbs QC allowed Burdon’s appeal and gave several reasons. He stated:
“Steel’s use of the name THE ANIMALS was likely to give rise to the mistaken belief that any band performing under that name was the full successor in title to the business of the group originally called by that name. Such misrepresentation was liable to damage the economic value of the goodwill and reputation of the business signified by the name THE ANIMALS. It was thus open to Burdon, as one of the members of the group at its last performance in 1983, to invoke the law of passing off for the protection of the goodwill and reputation to which the group members were collectively entitled.”
It was held that Steele was not entitled to claim the entire goodwill and reputation of the ‘The Animals’ band and relevant consent was required from the remaining right holders in order for John Steel to register the trade mark. The original decision was therefore overturned and the opposition was upheld.
This article was written by Rachel Pellatt, a Law student at Solent University. Rachel works one day a week at Lawdit.
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