The 1970s band The Rubettes, known for the song “Sugar Baby Love”, were at the centre of a passing off judgment this month (Alan Williams Entertainments Ltd & Anor v Clarke & Ors).
The claim was brought by one former member of the band, Alan Williams, and his company Alan Williams Entertainments Limited (AWEL) against two other former members, Mick Clarke and John Richardson, and a third performer, Steve Innes Etherington.
The defendants had performed using the name “The Rubettes” since late 2018, and had also registered a UK trade mark for the name.
The Rubettes were formed in 1974, and have existed on and off since then, with various members (including those involved in this litigation) being part of the line up at different times. At times the band name was used with a suffix such as “The Rubettes featuring Alan Williams”. Since 2014, Williams himself had spent increasing amounts of time in Australia.
After analysing in detail the history of the relationships between the parties, and the various agreements, Judge Ms Pat Treacy concluded that the claimants had continued to accrue goodwill in “the Rubettes”. She rejected the arguments that any goodwill had been “dissipated” through non-use of the name since the early 2000s and/or that it had been “abandoned”.
The consequence was that:
the claimants had established goodwill in the Rubettes name from at least 1983;
the defendants did not have concurrent or senior goodwill; and
as of autumn 2018 the defendants had never carried on trade as the Rubettes, or any similar name.
The limited evidence available indicated there was both confusion and damage. As well as filing the trade mark application, the defendants had registered domain names and social media accounts. Therefore, their use of the word “Rubettes” was a misrepresentation and likely to cause damage to the claimants (AWEL). The judge noted:
“The damage in question relates not only to the intrusion on AWEL’s goodwill, which is inherent in the registration of domain names, but also actual loss and damage caused by the unwillingness of promoters to book the Claimants’ band because of the Defendants’ activities.”
Trade mark registration
It followed from the passing off finding that the defendants’ trade mark registration should be invalidated. The judge said the application was made in bad faith contrary to section 3(6) of the Trade Marks Act 1994:
“Mr Clarke’s application was not motivated by an interest in protecting against unlawful use. It was motivated by an intent to interfere with the Claimants’ legitimate conduct in a context where there was no reasonable basis to believe that those interests were being abandoned, and the UK TM was subsequently exercised so as to interfere with the Claimants’ business. Mr Clarke’s conduct in applying for the UK TM falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the music business.”
This is the latest of many disputes between former band members and is unlikely to be the last. Many bands are formed when the members are young and their careers subsequently go in different directions. Meanwhile, audiences at gigs and festivals are keen to see old songs performed, creating demand for musicians to re-form, or to find new members.
It is as important to establish who owns the name and other trade mark rights associated with the band as it is to have solid copyright agreements. The convoluted history of this dispute provides a stark warning to bands today to seek legal advice before agreeing such issues.
As the judge emphasised:
“Mr Clarke and Mr Richardson are at liberty to describe themselves as former members of the Rubettes. However, once they begin using the name ‘the Rubettes’ to trade, they are invading the Claimants’ goodwill in that name as those seeing the name would be likely to infer that there was some connection between their activities and the undertaking having goodwill in the name.”