Monday 13 April 2020

BONZO DOG and the last men standing principle

Image 1 for trade mark number UK00003129760 The group of trade mark cases on band names was recently added to by the decision of Oliver Morris in BONZO DOG DOO DAH BAND on 30 October 2019 (O-664-19).  There was also a High Court case relying on many of the same issues which was struck out on 8th April 2020 because the IPO decision created an issue estoppel - now the firmly established situation for cancellation actions at the IPO as opposed to opposition decisions.
After sifting through a mass of history from the 1960's Mr Morris held that the residual goodwill in 2005 would have been owned by "the last men standing" (para 105). There were renewed activities beginning in 2006 which had been promoted to some extent by Anglo, the entity that had registered the UK trademark 3129760 shown above in 2015. Where did the goodwill go? Was it new and separable as Anglo contended, or did it continue to accrue to the last men standing. The last men won out and the trade mark was invalidated on a passing off 5(4) ground as well as for bad faith.
Although the band claimed to be a "partnership", it was more akin to an unincorporated association of individuals with no contractual or other arrangements. This followed the finding in the ANIMALS case decided by Mr Hobbs  in September 2013. In this situation of a mere "alliance"the goodwill is left with the last man standing. This principal was elaborated in more depth by Mr Hobbs in CLUB SAIL back in 2010 quoting some of the original band cases (SAXON and THE SUPREMES)
Bonzo Dog Doo-Dah Band in Fenklup (Dutch TV), 7 June 1968. Probably Roger Ruskin Spear or Rodney ("Rhino") Slater This image is from the Beeld en Geluid Wiki
The Band chose not to be legally represented before the Registrar, though they were later in the High Court, after a crowdfunding exercise which billed it as a "criminal case". 

There seems to be something about the music industry that prevents musicians creating either a proper partnership or corporate structure. Although even with a corporate structure, it is still possible for departing band members to reconcile themselves to the fact that by leaving they abandon their interest in the goodwill along with their shareholding.
Maybe today's bands and their promoters are more inclined to take professional advice and register trademarks in an appropriate entity. The cost of doing so is very small compared to the agony of these protracted, evidence heavy and distressing disputes.

1 comment:

  1. Good to see SOLO IP coming back to life (after a long sleep) !