Background
Fifth Avenue Entertainment LLC applied to register “THE COMMODORES” as a UK trade mark. The company is controlled by Thomas McClary, a founding member of the Commodores who left the band in 1984. Commodore Entertainment Corporation opposed registration, relying on its goodwill in the Commodores name and alleging that the application had been made in bad faith.
A UK Intellectual Property Office hearing officer upheld both objections. He found that Commodore Entertainment had conducted the band’s musical business after 1984 and owned more than trivial UK goodwill in the name by the relevant date, 17 October 2014. He also found that Fifth Avenue’s 2021 application was intended to undermine the interests of Commodore Entertainment or the former partnership. Fifth Avenue appealed on five grounds, challenging findings about McClary’s departure, ownership of goodwill, passing off, and bad faith.
The Court’s Holding
Mr Justice Richards dismissed the appeal. The hearing officer was entitled to find that Commodore Entertainment had generated its own goodwill through its musical activities under the Commodores name after 1984. Even if the former partnership retained goodwill created before 1984, that did not establish that it also owned the goodwill generated by Commodore Entertainment’s later activities. The proposed mark would misrepresent a connection with Commodore Entertainment and damage its goodwill, so the passing-off objection under section 5(4)(a) of the Trade Marks Act 1994 succeeded.
The court also upheld the finding of bad faith under section 3(6). The hearing officer could conclude that Fifth Avenue sought to exclude Commodore Entertainment from using a name under which it had traded for more than 30 years. Fifth Avenue’s evidence did not rebut that prima facie case. The hearing officer applied the test at the correct date, 30 July 2021, while permissibly using events from 2014 to assess the applicant’s intentions.
The remaining challenges also failed. The hearing officer had not applied English partnership-at-will principles when construing the relevant agreements and was entitled to find that McClary left the partnership in 1984 and that his withdrawal letter was genuine. Arguments about the effect of Alabama law could not be introduced without having been raised and supported by evidence below, while several newly developed contractual-construction arguments fell outside the pleaded grounds of appeal.
Key Takeaways
- A business using a band name can acquire separate goodwill through its own activities even if another entity retains earlier goodwill in the same name.
- An applicant may act in bad faith by seeking trade mark rights intended to shut out a party that has long traded under the mark, even where the applicant claims a historical connection to the name.
- Foreign-law and fact-sensitive arguments generally cannot be raised for the first time on appeal without appropriate evidence, particularly where they would have changed how the original hearing was conducted.
Why It Matters
The judgment illustrates that the ownership of goodwill in a long-running musical group’s name depends on who conducted the relevant business and generated the goodwill, not merely on founding membership or historical association with the band. Earlier goodwill held by a partnership does not automatically absorb goodwill later generated by a separate operating company.
It also underscores the restrained approach taken on appeals from specialist trade mark tribunals. Parties must present their contractual, factual, and foreign-law cases at first instance; an appeal by review is not an opportunity to reconstruct the case using new theories unsupported by the original evidence or grounds.