The claimant operated The Ukulele Orchestra of Great Britain (UOGB); a group of ukulele players. It owned the trademark THE UKULELE ORCHESTRA OF GREAT BRITAIN
Yellow Promotion, the second defendant, operated a group of ukulele players called “The United Kingdom Ukulele Orchestra” (UKUO), of which the first defendant was a partner.
The claimant commenced proceedings on the basis that there would be confusion between the 2 orchestra’s branding, for dilution of the brand contrary to Articles 9(1)(b) and (c) of the Community Trademark Regulations (207/2009/EC), and for passing off. A claim of infringement of copyright was also brought against the defendant, in relation to UOGB’s a number of elements of performances.
UKUO raised a defence against the claim for infringement and brought a counterclaim for a declaration that the copyright trademark was invalid.
It was held that:
- The CTM was invalidly registered;
- Yellow Promotion would have infringed the copyright trademark had it been valid;
- Yellow Promotion were found to have been passing off;
- The infringement of copyright claim failed.
Points to note
The decision highlights that copyright trademarks that are descriptive are in danger of being invalid; a trademark owner must show distinctiveness when choosing a name. Although the need for a trademark to show distinctiveness in every member state where English is recognised is a draconian measure, businesses wishing to copyright trademarks will need to keep this requirement in mind.