UK ukulele confusion: national passing off rights
A recent UK court decision demonstrates the potential vulnerability of Community Trade Marks (CTMs) having a low degree of distinctive character, the challenge of proving acquired distinctiveness across a sufficient part of the European Union (EU), and the utility of including a claim for passing off in infringement proceedings.
The Ukulele Orchestra of Great Britain (UOGB), known in the UK and Germany for their somewhat eccentric concert performances involving distinctive evening dress, joke-telling and arrangements of well-known rock songs and film themes played on their ukuleles, had a challenging time in their attempt to stop a rival group performing under a similar name, The United Kingdom Ukulele Orchestra (UKUO).
The UOGB brought its claim before the Intellectual Property Enterprise Court (IPEC), the UK's increasingly popular streamlined forum for intellectual property disputes valued up to £500,000 (but with the power to order the full range of injunctive remedies). The UOGB claimed infringement of their CTM for THE UKELELE ORCHESTRA OF GREAT BRITAIN, registered for various concert-related services in class 41 and CDs, DVD, and video/audio tapes in class 9, as well as passing off.
The UKUO denied passing off or trade mark infringement and counterclaimed for invalidity of the CTM, on the principal basis that it is descriptive of the relevant goods/services. The UOGB sought to defend the validity of its CTM by showing that the mark had acquired distinctiveness as a result of the use they had made of it over the years.
The validity issue turned on the quality and extent of the UOGB's evidence of acquired distinctiveness, which they needed to establish across the relevant part of the EU. In the case of a word mark in the English language, that meant producing evidence from all countries in which the descriptive meaning of the mark would be readily understood by the public, ie, the English-speaking countries of the EU and all other EU countries where basic English could be understood.
Accordingly, evidence of acquired distinctiveness was required in 12 EU countries: UK, Ireland, Malta, Germany, the Netherlands, Denmark, Sweden, Finland, Cyprus, Austria, Luxembourg and Belgium.
Since the UOGB was only able to show acquired distinctiveness through its use of the mark in the UK and Germany, the CTM was found to be invalid.
The court went on to consider the UOGB's evidence of confusion, which had occurred in a number of countries including the UK, and held that its passing off claim should succeed. The court also commented that, had the CTM been validly registered, it would have been infringed, since the defendants' adoption of their name was in circumstances where they knew or ought to have known they risked objection from UOGB, and was not in accordance with honest commercial practices.
This case highlights the onerous requirement of proving acquired distinctiveness of a CTM which is an English language word mark. It also shows some of the risks when attempting to enforce a CTM of inherently low distinctiveness – in this instance, resulting in loss of the mark. Whilst the passing off claim succeeded, we are left with the feeling that the UOGB ended up with less than they might have expected. Had they relied on a national trade mark registration, for which the required evidence of acquired distinctiveness would have been correspondingly narrower, life would have also been easier.
Be aware of the risks when seeking to enforce CTMs of low distinctiveness.
Do not under-estimate the burden of proving acquired distinctiveness of an English language word mark CTM.
Do include a claim for passing off if possible.
A national trade mark may be simpler to enforce and defend against attack than a CTM.
Case details at a glance
Jurisdiction: United Kingdom
Decision level: The High Court of Justice Chancery Division IP Enterprise Court
Parties: The Ukulele Orchestra of Great Britain v Erwin Clausen, Yellow Promotion GmbH & Co KG t/a The United Kingdom Ukulele Orchestra
Citation:  EWHC 1772 (IPEC)
Date: 02 July 2015