As the result of a recent High Court decision the band Reef have failed to secure the registration of their name as a trade mark. The band applied for the registration of “Reef” as a trade mark in classes of goods including t-shirts and the usual range of band merchandise. The registration was opposed by South Cone, a clothing company which produces sandals popular with surfers. South Cone had already registered “Reef Brazil” in respect of goods in the same class, specifically footwear.
The High Court decision again raises the issue as to whether trade mark protection is only available for what is referred to as “trade mark use” of words and logos and shows how the protection given to “merchandising rights” by trade mark registration can be very limited.
South Cone argued firstly that the application was in bad faith because it was not the intention of the group to use the name as a trade mark. A trade mark is something used to identify the supplier of the goods concerned. South Cone claimed that Reef’s use of their name on merchandise was intended to promote or endorse the band not identify the supplier of the merchandise. Mr Justice Pumfrey found that on the assumption that trade mark protection is only available for “trade mark use” (an issue presently awaiting clarification by the European Court of Justice) the name could be used both as a trade mark and as a means of promotion or endorsement. He thought that there was sufficient evidence that Reef intended to use it in both ways.
South Cone also raised the second argument that “Reef” was similar to “Reef Brazil” and it would be used on similar goods giving rise to a likelihood of confusion. Mr Justice Pumfrey found, unsurprisingly, that “Reef” as a potential trade mark was similar to the registered trade mark “Reef Brazil”. He also concluded that t-shirts and sandals are similar goods and that consumers including surfers, a consumer group targeted by the band’s promotional activities, would be likely to purchase Reef merchandise under the mistaken impression that it was supplied by South Cone. These further conclusions do seem surprising. In the leading British Sugar decision a much stricter approach to such matters was taken by the High Court.
Not many bands will be so unlucky as to have names similar to those of clothing and footwear manufacturers. However the case does show that any registration of a band name as a trade mark with a view to protecting “merchandising rights” may be vulnerable to attack upon the basis that the band name is not actually being used as a trade mark in relation to that merchandise. It is in the interests of bands and merchandisers to ensure that the name is used as a trade mark appearing on product packaging and in neckband labels not just on the front of t-shirts.