Trade mark dispute rocks Deep Purple
4th March 2019
Chartered Trade Mark Attorney, David Gwilliam, explains why relying on rights under the law of passing off can be costly, difficult and time-consuming.
Former band member applied to register ‘DEEP PURPLE’ trade mark
The General Court of the European Union has issued a collection of decisions relating to a dispute over the ownership of the name of the English rock band Deep Purple between two of its founding members.
Ritchie Blackmore, the former guitarist of Deep Purple who left the band mid-tour in 1993, applied to register DEEP PURPLE as a European Union trade mark in relation to entertainment services in Class 41 and a range of merchandise, such as clothing, sunglasses, mouse mats and mobile phone accessories in Classes 09 and 25.
Ian Paice, the Nottingham-born drummer and only founding member of Deep Purple still in the band, opposed Mr Blackmore’s application. Mr Paice had not already applied to register DEEP PURPLE himself but claimed that he nevertheless owned exclusive rights to the name under United Kingdom law as a result of its intensive use since the formation of the band in 1968.
What is required to enforce unregistered trade mark rights?
The most effective means of protecting a trade mark is to register it. However, the United Kingdom also provides protection under the law of passing off for trade marks that have not been registered, if the trade mark has been used sufficiently to acquire goodwill amongst the public, and these are the rights that Mr Paice relied on in his opposition to Mr Blackmore’s application. The existence of these rights in the United Kingdom is sufficient to prevent the registration of the trade mark in the European Union as a whole by virtue of the United Kingdom’s membership of the European Union.
Asserting rights under the law of passing off requires a significant amount of evidence in order to prove that the trade mark has been used sufficiently to generate the requisite goodwill, and hence that the rights under the law of passing off even exist.
Accordingly, Mr Paice initially submitted a significant amount of evidence relating to the successful music career of Deep Purple. It was accepted that this evidence demonstrated the existence of goodwill in relation to entertainment services and a small subset of goods including musical recordings. It was further accepted that this goodwill was at least jointly owned by Mr Paice by virtue of his membership of the band and therefore that he was entitled to rely on this goodwill in his opposition to Mr Blackmore’s application. However, it was not accepted that the evidence had proven the existence of goodwill in relation to any other goods or services and hence Mr Blackmore was permitted to register DEEP PURPLE in relation to all other goods that he applied for, including merchandise items such as clothing and sunglasses.
Further evidence can be required to demonstrate the scope of unregistered rights
Mr Paice filed an appeal against this initial decision along with further evidence demonstrating that clothing merchandise, and accessory goods such as sunglasses, are an essential part of the business of a rock band on tour. This additional evidence was considered sufficient to establish that the goodwill in the name DEEP PURPLE also extended to these goods, and hence Mr Blackmore’s application was also refused in relation to these goods following the appeal.
However, Mr Paice was not able to establish the existence of goodwill for other goods such as mouse mats and mobile phone accessories, which were considered to be less likely to be decorated with the imagery of a rock band. Mr Blackmore was therefore still able to register DEEP PURPLE in relation to these goods. The outcome of this appeal has now been confirmed by the General Court of the European Union.
Unregistered trade mark rights can be unreliable and extremely difficult to enforce
These decisions highlight the difficulties and uncertainties of relying on unregistered trade mark rights under the law of passing off. A significant amount of evidence is required in order to demonstrate that rights under the law of passing off even exist, and further evidence may be required to demonstrate entitlement to rely on those rights or to determine the scope of those rights. The cost of gathering, organising and submitting this evidence can be extremely high and a claim on this basis can fail in the event that this evidence is deficient for any reason.
Accordingly, failing to protect important trade marks with a registration and instead attempting to rely on rights under the law of passing off is undoubtedly a false economy and it is clear that, if a trade mark is worth protecting, it is worth protecting with a trade mark registration.
If you have any questions about this article or would like to find out more about protecting your trade marks, please contact us on 0115 947 7977 or by emailing firstname.lastname@example.org .
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