INXS International Pty Limited opposed Jiangxi Maisi Clothing Co Ltd’s UK Designation of its international registration for the stylised mark IMXS. The international registration covered various goods in classes 14, 18, 25 and 30, such as bags, clothing and tea. The opposition was based on the grounds of a likelihood of confusion, damage and/or unfair advantage to reputation, and passing off.

Despite having a relevant trade mark registration, INXS’s strongest case was considered to be its passing off claim. To succeed, it was required to establish goodwill, misrepresentation and damage.

Goodwill in music, not merchandise 

The evidence demonstrated the band’s substantial success since 1979. INXS had sold more than 70 million records, generated billions of streams and performed extensively throughout the UK over several decades. Whilst the band’s last UK performance took place in 2011, the evidence showed ongoing radio play, significant streaming figures, continued media coverage and the re-release of material. The hearing officer therefore concluded that the band retained significant residual goodwill at the relevant dates in relation to musical recordings and musical performances.

However, the hearing officer drew a distinction between the band’s core music activities and its merchandising activities. Whilst accepting that bands commonly sell merchandise, the evidence of sales of INXS-branded goods was considered limited. UK merchandise turnover between January 2020 and September 2024 amounted to approximately £4,000 and covered numerous product categories without specificity. The hearing officer considered this to reflect an extremely low level of trade and found it insufficient to establish protectable goodwill in merchandise goods.

No misrepresentation

In considering whether the public would be misled into purchasing the relevant goods, the hearing officer found the marks to be similar to a medium to high degree (there was held to be no conceptual similarity). Notwithstanding this, INXS was unable to show a misrepresentation, largely as a result of the parties’ different fields of activity.

The opponent’s goodwill existed in relation to musical recordings and performances, whereas the holder sought protection for consumer goods, and whilst the hearing officer accepted that bands often engage in merchandising and thus some degree of overlap existed, such an overlap was “tenuous”.

Whilst passing off does not require the parties to operate in a common field of activity, it is a relevant consideration. There will be a higher burden on proving an actionable misrepresentation and damage where there is no or only a tenuous overlap.

The hearing officer concluded that the opponent’s residual goodwill was insufficient to bridge the gap between the parties’ fields of activity. They were not satisfied that a substantial number of the opponent’s actual or potential customers would believe that the designated goods originated from, or were commercially connected with, the band. Without misrepresentation, the passing off ground failed.

Residual goodwill v genuine use

Notably, it was found that the opponent was not in a better position as regards the likelihood of confusion and reputation grounds. The hearing officer found that the evidence would have been insufficient to establish genuine use during the relevant period. In doing so, the decision highlights an interesting distinction between goodwill and genuine use. Whilst the evidence was sufficient to demonstrate that INXS retained significant goodwill, it was not considered to show that the opponent had attempted to create or maintain a market share in the mark INXS. In any event, the hearing officer concluded that, even if genuine use had been established, the distance between the parties’ respective goods and services would have remained problematic.

Key takeaways

• Goodwill may survive reduced or ceased trading. 
• Merchandising goodwill requires evidence of relevant trade. 
• Similar signs and substantial goodwill do not automatically establish misrepresentation across different fields. 
• Residual goodwill and genuine use are distinct evidential questions.
• Renowned music artists should consider pleading “well-known mark” status of their performing names under Article 6bis of the Paris Convention when seeking to enforce those marks against third parties:  such a claim could well lend additional weight in circumstances where proving genuine use of a registered trade mark may be problematic.

Case details at a glance

Jurisdiction: England & Wales
Decision level: UKIPO
Parties: Jiangxi Maisi Clothing Co Ltd and INXS International Pty Limited
Date: 14 September 2026
Citation: O/0829/26
Decision: https://dycip.com/ukipo-o-0829-26