In August last year we reported that the band Reef had failed to secure the registration of their name as a trade mark. The band had 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 who had ‘Reef Brazil’ registered in respect of goods in the same class, specifically footwear. They produce sandals popular with surfers.
Reef were successful before the hearing officer in the Trade Mark Registry but unsuccessful on South Cone’s appeal to the High Court. It was Reef’s turn to appeal to the Court of Appeal.
Before the Court of Appeal the legal issues had been whittled down. The Court of Appeal had only to consider one issue seriously which was South Cone’s opposition on the ground that ‘Reef’ was a similar mark to ‘Reef Brazil’ and it would be used on similar goods giving rise to a likelihood of confusion. This is a ground for refusal of registration under section 5 of the Trade Marks Act.
Both sides agreed that ‘Reef’ as a potential trade mark was similar to the registered trade mark ‘Reef Brazil’. No surprises there.
The hearing officer in the Trade Marks Registry had concluded that the two marks were not so similar nor were the goods upon which they were to be used so similar that there was a likelihood of confusion. Mr Justice Pumfrey in the High Court took a different view influenced in particular by the fact that surfers, a consumer group supposedly targeted by the band’s promotional activities, were likely to purchase the band’s merchandise under the mistaken impression that it was supplied by South Cone.
We commented that ‘these conclusions seem surprising’. The Court of Appeal evidently agreed. It found last week that the judge was wrong to have substituted his own view of the evidence for that of the hearing officer and restored the officer’s decision.
This was a narrow escape for the band. The registration of band names as trade marks with a view to protecting ‘merchandising rights’ gives rise to difficult legal issues.
Such registrations are vulnerable to attack on the basis that the band name is not actually being used as a trade mark at all in relation to the merchandise but rather a badge of allegiance to the band (the issue which arose in the ‘Arsenal’ case where the decision of the European Court of Justice is awaited). It is in the interest of bands and merchandisers to ensure that the band name is used on the traditional places for trade marks, such as product packaging and garment neck labels, and not just on the front of T-shirts.