A case involving competing ukulele orchestras demonstrates the difficulties in proving the validity of a descriptive English language Community Trade Mark and the enduring usefulness of national trade mark registrations and passing off.

The Ukulele Orchestra of Great Britain v Clausen & Anor (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 (IPEC) (02 July 2015) is the most recent development in a dispute between one small orchestra of British ukulelists founded in 1985 and another, formed in 2009 in Germany.

The Ukulele Orchestra of Great Britain (“UOGB”) owned a Community Trade Mark (“CTM”) for its name as a word mark.  It was registered in seven classes, including a range of services relating to live music events and media in class 41 as well as CDs, DVDs, video and audio tapes in class 9.

In 2014, UOGB had failed to obtain an interim injunction against its German rival, The United Kingdom Ukulele Orchestra.  In a final hearing before the Intellectual Property Enterprise Court this year, UOGB’s CTM was held to be invalid, but it succeeded in an alternative claim in passing off.

Details

Article 7(1) of the CTM Regulation provides (inter alia) that purely descriptive marks shall not be registered:

7(1)(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

Article 7(3) provides an exception, allowing descriptive and other marks to be registered if they have acquired distinctiveness:

7(3)      Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

HH Judge Hacon held that “The Ukulele Orchestra of Great Britain” was descriptive to the average English speaking consumer for concert services, CDs and DVDs within the meaning of Article 7(1)(c).  This was despite UOGB’s submission that “orchestra” suggested a large group of musicians playing different instruments (UOGB is composed of eight musicians, playing ukuleles in different registers).

As a result, for the mark to be validly registered, UOGB needed to prove acquired distinctiveness under Article 7(3).  However, acquired distinctiveness for an English-language word CTM must be proven by the owner, not just in the United Kingdom, but across:

• those Member States where English is the official language or mother tongue (UK, Republic of Ireland and Malta);
• those member states where English is sufficiently well spoken by the average consumer for the descriptive character of the word mark to be perceived (e.g. Netherlands, Sweden, Denmark, Finland and Cyprus); and
• those Member States in which another relevant language is spoken, meaning one in which the English word or words of the CTM are sufficiently similar to their equivalents in that language for the average consumer who speaks that language to perceive the descriptive character of the word mark.

The effect of this was that UOGB needed to prove acquired distinctiveness in each and every Member State across this territory.

Sufficient evidence was submitted to demonstrate distinctiveness acquired through use of the name in concerts in the UK and Germany, but UOGB failed to show sufficient evidence of distinctiveness across the whole list of countries, with particular reference to Malta, Cyprus, Denmark and Luxembourg (despite having played concerts in two of them).  Accordingly, UOGB’s CTM was held to be invalidly registered and its action for infringement (which, it was noted, would have succeeded otherwise), failed.

Whilst a further claim in copyright for a dramatic work also failed, UOGB had one remaining string to play, in the tort of passing off.  It was held that the evidence of similarity and confusion, including the testimony of concert ticket buyers, had established that:

“…the use of the trade name ‘The United Kingdom Ukulele Orchestra’ misrepresents to a substantial proportion of the public in this country who recognise ‘The Ukulele Orchestra of Great Britain’ as the trade name of a particular musical group, that UOGB and UKUO are the same group or are otherwise commercially connected. I am also satisfied that this has caused damage to UOGB’s goodwill, particularly by way of loss of control over UOGB’s reputation as performers.”

WAB Comment

The decision highlights that those who wish to register descriptive English language word marks as CTMs will need to be able to prove distinctiveness in each Member State where English is understood by the average consumer, or where the specific words’ meanings can be understood by average consumers who speak other languages.

In this case, despite the UOGB’s proven popularity in the UK and Germany, its failure to break into the potentially lucrative live ukulele markets in Malta, Cyprus, Luxembourg and Denmark meant that its CTM was invalid.

Where such a name is descriptive, but a reputation has been established in at least one country, a national trade mark may be a better form of protection than a CTM, or at least may provide a useful fall-back in key markets in case a CTM is held to be invalid.

In any event, it is reassuring that the tort of passing off continues to provide some protection from the exploitation of very similar marks by others when the registered mark fails, but the claimant can nonetheless prove the required elements of goodwill, misrepresentation and damage.