Court Of Appeal Allows Reverses Estoppel Finding And Reinstates Defences In "Love/Luv Injection" Band Name Passing Off Case

Published date21 July 2021
Subject MatterIntellectual Property, Trademark
Law FirmWiggin
AuthorMr Victoria Gyles

Background

The claimant, Ian Thomas, and the defendant, Winston Thomas, are half-brothers. Between about 1986 until 2016 they (and others) were members of a band (or "sound") known as LOVE INJECTION or LUV INJECTION. The band split in 2016, following which Ian started to perform along with others under the name "Love Injection" and less frequently "Luv Injection" and Winston started to perform under the name "Luv Injection Sound".

In 2017, Winston applied to register LUV INJECTION SOUND and LOVE INJECTION SOUND as UK trade marks in Class 41. One of the applications resulted in registration. Ian then opposed the second application and challenged the validity of the first, alleging bad faith under s 3(6) and claiming an earlier right to prevent use of the marks by virtue of the law of passing off under s 5(4).

The dispute resulted in a hearing at the IPO. The Hearing Officer found that the sound was "an unincorporated association and a partnership at will" and that therefore the goodwill resided with the changing members of the band, meaning that up until the band split in 2016, Ian was an owner of the goodwill as well as Winston. Given that Ian's interest was not transferred when the band split, at that point in time Ian still owned that interest for the purposes of s 5(4). The Hearing Officer said that it was not necessary for him to consider what happened to ownership of the goodwill after that point in time, i.e. following the split.

Having established that Ian had the requisite goodwill, the Hearing Officer also found that the use of Winston's registered mark would amount to misrepresentation leading to damage. Therefore, the opposition under s 5(4) succeeded, as did Ian's application to revoke the registration. The Hearing Officer also decided that the mark had been registered in bad faith under s 3(6) and it was revoked on that ground as well. The opposition on that ground also succeeded. Winston did not appeal the Hearing Officer's decision.

In October 2019, Ian issued proceedings for passing off against Winston in relation to the right to use the sound's name.

In his Defence, Winston asserted that the name was his trading name, as a sole trader. His primary case was that the goodwill belonged to him, that he was entitled to continue to use it, and that, on the contrary, it was Ian who was passing off.

Winston also pleaded two alternative cases: (i) that: (a) the Hearing Officer had decided that the band was a partnership at will; (b) at the date of...

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