This case involved two members of the band Wishbone Ash who enjoyed significant musical success in the 1970s. Mr Powell was the sole surviving member of the original line up of the band and continued performing and recording under the name Wishbone Ash. He also owned a Community trade mark for ‘WISHBONE ASH’ which was filed in 1998 and owned the domain name wishboneash.com which hosted the band’s website. In 2004/5, Martin Turner (a member of one of the incarnations of the band, but not the original line-up) started to perform again under the name ‘Martin Turner’s Wishbone Ash’.
After a ‘gentleman’s agreement’ between the two broke down, Mr Powell issued proceedings against Mr Turner for trade mark infringement for the use of the name ‘Martin Turner’s Wishbone Ash’ and the domain name wishboneash.co.uk. He claimed, amongst other things, that the Martin Turner’s Wishbone Ash mark was confusingly similar to WISHBONE ASH and also took unfair advantage of, or was detrimental to, the reputation and distinctive character of the registered trade mark. Mr Turner denied infringement and counterclaimed that the registered trade mark should be held invalid as it was registered in bad faith by Mr Powell. He claimed that Mr Powell was seeking to obtain exclusive rights in the name without any reasonable belief that he was entitled to them as he was not the only surviving band member of its various line-ups and so should not own the exclusive rights to the name.
On these issues the judge found in favour of Mr Powell, stating that:
- Based on the evidence given by Mr Powell, he had not filed the trade mark application in bad faith as primarily he had sought to protect the name from other third parties;
- The ownership of the goodwill (or commercial attraction) in the band name ‘Wishbone Ash’ was legally a difficult question to answer for the judge. The original band had traded under a limited company, but this was dissolved in 1993. The judge decided that there was some goodwill left and this was increased by Mr Powell’s use of the name from 1994. It was not merely enough that he was the “last man standing” of the original band members to claim the goodwill. Instead, based on the fact that in 1998 Mr Powell was the only person interested in performing under the name and the other individuals who could claim ownership of the goodwill had allowed him to continue performing, the most logical explanation was that Mr Powell owned the goodwill; and
- The registered trade mark was infringed by Mr Turner’s use as it was confusingly similar to, adversely affected, and took advantage of, the reputation in the trade mark. He decided that the term ‘Martin Turner’ would not mean anything to the average consumer, so the consumer would focus more on the ‘Wishbone Ash’ element of the mark.
Mr Turner will therefore have to cease the use of the term ‘Martin Turner’s Wishbone Ash’.
This case highlights how the lack of any agreement between band members addressing the issue of ownership of the goodwill in the name can cause difficulties down the line.
Daniel Berry, an Associate in the Intellectual Property Group at Clarke Willmott commented, “Most disputes between band members relate to copyright and disputes over who owns the rights to which songs. Increasingly though there are disputes over the rights to the name of the band (Saxon, Bucks Fizz and Sugababes by way of example), as often the band names are better known than the individuals themselves. After bands have split up, individuals may want to perform using the original band’s name, and this case highlights how agreements should be put in place to govern such situations between the band members to provide certainty as to who owns what rights, and band members should file for a registered trade mark for their band name as early as possible in the process.”