Andrew Powell v Martin Robert Turner* (Recorder Douglas Campbell; [2013] EWHC 3242 (IPEC); 24.10.13)

Recorder Douglas Campbell found that Mr Powell's CTM for WISHBONE ASH (the 'Mark') had not been registered in bad faith. He also dismissed Mr Turner's claim for an account of such share of the profits made by Mr Powell through use of the WISHBONE ASH mark. He found that the use by Mr Turner of the name 'Martin Turner's Wishbone Ash' and the domain name 'www.wishboneash.co.uk' (together, the 'Signs') infringed the Mark under Articles 9(1)(b) and 9(1)(c), but rejected a claim under Article 9(1)(a) for non-identity of the Signs with the Mark.

Since 1969 Mr Powell had been a member of a large number of band line-ups all of which traded as Wishbone Ash. In 1994, Mr Powell found himself as the last surviving member of the original Wishbone Ash line-up and carried on performing and recording under the name but on a sole trader basis employing third party musicians.

The first and second line-ups of Wishbone Ash had been partnerships with all liabilities and profits being split equally between the four members. In 1978 a limited company was incorporated to conduct the day to day business of the band. There was no agreement between the band members as to the ownership of goodwill. Mr Powell was the sole owner of the Mark which he applied to register in 1998 in Class 41 for, among other things, musical entertainment services.

Mr Turner was a member of some of the line-ups, including during the band's most successful period from 1969 to 1981. From 2004 or 2005, Mr Turner toured as 'Martin Turner's Wishbone Ash'. He owned the registered domain name 'www.wishboneash.co.uk'.

Mr Powell brought proceedings against Mr Turner for infringement of the Mark. Mr Turner alleged that the Mark was invalid as it had been registered in bad faith and argued that Mr Powell was liable to account for the profits made by use of the name Wishbone Ash either since 1969 or 1994.

Validity of the Mark

In finding that the Mark was not registered in bad faith and was, therefore, valid, the Recorder considered the following: (i) Unrelated third parties were using the Mark and therefore registering it was a reasonable commercial step for Mr Powell to take; (ii) Other than Mr Powell, none of the original Wishbone Ash members were performing in their own right in 1998 or appeared interested in performing as Wishbone Ash in any capacity and it was not foreseeable that this would change; (iii) None of the original band members had ever sought to prevent Mr Powell from using the name Wishbone Ash for his own band; (iv) Mr Powell believed that he was the sole owner of the goodwill in the name Wishbone Ash in 1998; and (v) Mr Powell's failure to inform the other original band members of his trade mark application did not fall below the standard of acceptable commercial behaviour.

Infringement of the Mark under Article 9(1)(b)

The Recorder found that the Signs were similar to the Mark. He then went on to find that there was a likelihood of confusion between the Signs and the Mark under Article 9(1)(b) taking into account the following: (i) The Signs were highly similar to the Mark and being used in relation to identical services; (ii) The average consumer would not have had any specialised knowledge of the band's changing line-ups over time; (iii) The Mark had a highly distinctive character, due in part to the long term use that had been made of it; (iv) Evidence of confusion from the person responsible for a music venue at which Wishbone Ash had given two performances; (v) That the Signs were dominated by the 'Wishbone Ash' element.

In relation to the use of the domain name 'www.wishboneash.co.uk' by Mr Turner, the Recorder found that the reasoning above applied to the use of the domain name for advertising only and not in relation to content on the website concerning the historical background about the band.

Infringement of the Mark under Article 9(1)(c)

It was not disputed that the Mark had a reputation, and it was held that the use of the Signs gave rise to a link with the Mark in the mind of the average consumer. The Recorder went on to find that use of the Signs by Mr Turner took unfair advantage of the Mark, and was detrimental to its distinctive character as there had clearly been a change in the economic behaviour of the average consumer. Further, there were now two bands with the name Wishbone Ash (since the Recorder found that the qualifier 'Martin Turner's' was omitted in many instances by third parties).

Mr Turner was not able to demonstrate due cause as there was no reason why his band or the domain name (save for the web pages dealing with historical background) could not go by other names.

Liability of account

The Recorder found on the evidence that Mr Powell was the sole owner of the goodwill in the name Wishbone Ash at the time of registration of the Mark (on the basis of his position at that time and the fact that all other possible contenders for ownership of the goodwill had acquiesced in that position). The Recorder rejected Mr Turner's argument that Mr Powell was liable to account for the profits made by use of the name Wishbone Ash either since 1969 or 1994 finding that: (i) The claim was barred by acquiescence, having not been made until February 2013, almost 40 years since the end of the first line-up of Wishbone Ash; (ii) By February 1998, Andrew Powell was the sole owner of the goodwill in the Mark; and (iii) Mr Turner was not in a position to make the claim which should have been made by an administrator for the dissolved partnership.