An application by Holly Johnson, the former front man of controversial 1980’s popsters Frankie Goes To Hollywood, to register FRANKIE GOES TO HOLLYWOOD as a trade mark has been rejected following opposition by the band’s other former members.
The Facts
In April 2004 Mr Johnson applied to register FRANKIE GOES TO HOLLYWOOD in respect of a range of goods and services in classes 9, 16, 25 and 41. He did so without notifying or seeking the consent of the other members of the band, Paul Rutherford, Brian Nash, Mark O’Toole and Peter Gill who, later that year, filed an opposition to his application under the following sections of the Trade Marks Act 1994:
- Section 3(6) – bad faith – on the basis that the four opponents were original band members, that the rights in the name Frankie Goes To Hollywood are held jointly by all five members and that, by applying for registration without the others’ consent, Johnson’s application was in bad faith.
- Section 5(4)(a) – passing-off – on the basis that use of the trade mark, if granted, would be liable to be prevented by the laws of passing off or, in other words, that the goodwill jointly owned by the opponents in the band’s name would be in direct conflict with the granting of trade mark rights solely to Mr Johnson.
The Decision
The Hearing Officer of the Intellectual Property Office (www.ipo.gov.uk) upheld both grounds of opposition and rejected Mr Johnson’s application.
As to Section 3(6) (bad faith), the Hearing Officer noted that “bad faith” includes dishonesty and dealings which fall short of the standards of acceptable commercial behaviour. This test requires a combination of the subjective and the objective, ie knowledge that what was being done would be regarded as dishonest by honest people, akin to “conscious impropriety”. The Hearing Officer made particular note of the fact that Mr Johnson had made the application without the knowledge of the other band members and sought to monopolise the name to their exclusion merely to interfere with their rights.
As to Section 5(4)(a) (passing-off), the Hearing Officer found that the former band members had the requisite goodwill and reputation in the name Frankie Goes To Hollywood and that use of that name by Mr Johnson would amount to a misrepresentation from which damage would inevitably flow.
Conclusion
This case highlights the importance of trade marks in the management and control of brand and reputation issues for bands. Wherever possible we would recommend the following:
- Bands should register trade marks sooner rather than later.
- They should ensure that all appropriate parties (band members, managers and record companies etc) agree as to the ownership and use of the trade mark.
- On dissolution of the band, the ownership and use of the band’s name and goodwill and, in particular, of any trade marks should be clearly set out and agreed by all concerned.