Musical instrument trade mark case before Intellectual Property Enterprise Court

The facts:

The claimant operated a group of musicians who played ukuleles under the name ‘The Ukulele Orchestra of Great Britain’ formed in 1985 which enjoyed much success especially in the UK and Germany.

The defendant was a limited partnership under German law which operated another group of British ukulele players who, since 2009, had performed under the name ‘The United Kingdom Ukulele Orchestra’.

The claimant owned the community trade mark ‘The Ukulele Orchestra of Great Britain’.

The claimant alleged that the defendants had infringed the mark.

It also alleged passing off and infringement of two copyright works. The potential copyright works were a dramatic work, a photograph and sound recording in October 1985 and the second dramatic work was recorded in a video created between October 1987 and July 1989.

The defendants claimed a defence to infringement of the mark involving its use in accordance with honest practices. In addition, they submitted for a declaration that the mark was invalid.

The judgment:

The mark was descriptive in relation to concert services to the English speaking average consumer, both in the UK and the European Union. It was, therefore, invalidly registered as the claimant failed to demonstrate distinctiveness.

The mark was also descriptive in relation to CDs and DVDs which contain performances of ‘The Ukulele Orchestra of Great Britain’ and therefore did not generate acquired distinctiveness.

Accordingly, the mark had been invalidly registered as distinctiveness was lacking.

If the finding of invalidity was wrong, then the issue of infringement remained to be considered.

On the evidence, there was a likelihood of confusion and the mark, if valid, would have been infringed.

Use by the defendants of the sign was liable to give rise to at least one of detriment to the repute of the mark, unfair advantage being taken of the distinctive character or repute of the mark or detriment to the distinctive character of the mark.

Such use was without due cause and the defendants would have infringed the mark had the mark been validly registered.

Accordingly, had the mark been validly registered, it would have been infringed and the defendants would not have had a defence as it was held that they had knowledge of the claimants and should have had known about their success which would lead to confusion.

To conclude, the court also stated that the claimant’s claim of copyright infringement failed as no copyright subsisted in the first and second dramatic works relied on.

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