UKIPO rules in UK music’s ‘Frankincense and Myrrh’ dispute
The UK Intellectual Property Office (IPO) has weighed in on a trademark dispute between two music video producers claiming ownership of the ‘Frankincense and Myrrh’ brand.
In its decision, issued last Wednesday, September 4, the IPO ruled that F and M Media Group, a company owned by director Tarandeep Chowdhry, known professionally as Teeeezy C, was the rightful owner of the ‘Frankincense & Myrrh’ mark.
According to the decision, Chowdhry has been directing music videos for UK ‘urban music’ artists under the ‘Frankincense & Myrrh’ mark since 2015.
The company generated turnover in excess of £20,000 in 2017, and that year its music videos garnered at least 27 million views on YouTube, Chowdhry’s evidence stated.
On September 4, 2017, Chowdhry’s F and M Media Group applied to register ‘Frankincense & Myrrh’ in class 41, covering the production of music videos.
That same day, Frank Kennedy applied to register a number of marks for ‘Frankincense + Myrrh’, including with the suffixes “Media Group” and “Music Group”.
Kennedy said that he had been using the mark since 2013 in relation to a variety of music-related goods and services, including music videos.
Both parties filed oppositions to each other’s marks.
According to the IPO, only Chowdhry’s company could demonstrate protectable goodwill in relation to the sign. His evidence, which included, screenshots of music videos featuring the sign, viewing figures, and posters, led the IPO to conclude that Chowdhry’s goodwill associated with the sign was “more than trivial”.
Kennedy had failed to corroborate his claims that his own company was “widely noticed” in the UK urban music scene, the IPO said.
The IPO said that Kennedy’s turnover (less than £9,000 in 2017) was “very low” and that there was “scant evidence of the sign actually in use on the date the applications were filed”.
According to Chowdhry, he first became aware of Kennedy in 2017, when Kennedy contacted Chowdhry’s company to enquire about music videos for his artists’ songs.
Chowdhry said he learned some months later, while the two parties were still discussing a potential collaboration, that Kennedy had been independently using the ‘Frankincense and Myrrh’ name.
Chowdhry said that he had sent Kennedy messages via WhatsApp seeking an explanation, with their final exchange being just days before Kennedy filed his trademark application.
Kennedy, meanwhile, claimed that he had sent Chowdhry cease and desist letters in 2015, requesting that he no longer use the brand.
The letters provided to the IPO, however, were unsigned, and Kennedy did not submit any response from Chowdhry’s company in his evidence, despite claiming that F and M Media Group had agreed to stop using the mark.
F and M Media also argued that Kennedy had failed to provide any evidence that these letters were even sent.
“Mr Kennedy invites me to access the Royal Mail database to find receipts and reference codes as evidence that they were sent,” the IPO examiner said.
“I have already noted that any evidence that either party wished to rely on should have been provided, and it is not the role of the tribunal to undertake a further evidence-gathering exercise,” he concluded.
The IPO awarded costs of £2,700 to F and M Media Group.
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