12 October 2018Trademarks

Deep Purple cases are uncomfortable for TM bad faith, says counsel

Three recent decisions involving a trademark dispute between a member and a former member of English rock band Deep Purple have created potential problems for all post-grant trademark invalidity proceedings based on bad faith, a lawyer has claimed.

Mark Engelman, a barrister at London-based Hardwicke and counsel for Deep Purple band member Ian Paice, was speaking to WIPR in a personal capacity.

Last week, WIPR reported that the EU General Court had dismissed cross-appeals from both Paice and former guitarist Richard Blackmore in the trademark clash.

“Whilst both parties’ cross-appeals were dismissed, the General Court’s position on ‘deceptive intent’ remains unattractive,” claimed Engelman.

In April 2013, Blackmore applied to register the word sign ‘Deep Purple’ to cover classes 9 (musical recordings), 25 (clothing) and 41 (entertainment services).

Paice opposed the trademark the following year, claiming that it was too similar to an earlier unregistered mark for ‘Deep Purple’, and that use of the Blackmore mark could be prevented by an action for passing off.

More details on the case can be found here.

In his appeal, Paice claimed that the board had failed to take into account Blackmore’s intention to deceive the public.

But the court said it is common ground that Blackmore is a former member of the band and, as such, “is associated with the band in the mind of the public, which cannot in itself amount to proof of a deceptive intent on his part”.

Engelman noted that this answer leads to an “uncomfortable position for both European and UK trademark law and business”.

“For European law there exist too many uncomfortable analogies between the concepts of ‘bad faith’ … and that of ‘deceptive intent’, a UK passing off law principle, for the judgment to leave the law of bad faith unaffected. This potentially has ramifications for all post-grant trademark invalidity proceedings based upon bad faith,” he added.

In the UK, when deciding future cases of passing off, the courts are now left with a unique legal scenario where someone who leaves a business with the business’s trademark can “simply walk off with it, as long as the ex-member himself is associated in the minds of the public with the trademark in question”, claimed Engelman.

However, Birgit Clark, professional support lawyer at Baker McKenzie’s London office, noted that the General Court’s comments concerning deception seem to be highly fact specific.

The court noted that it was common ground that Paice was a former member and is associated with the band in the mind of the public, which didn’t amount to proof of a deceptive intent on his part.

Clark believes that the threshold of the association being “common ground” in particular sets a high hurdle, which will not be met in many cases.

Chris McLeod, partner in the London office of Elkington + Fife, added that while the judgment is binding, it is clearly fact specific, and he doubts that the UK courts would allow this judgment to open the floodgates.

Engelman imagined an example of an employee who leaves a retailer and decides to sell products that are not as important to the company’s core business as other goods.

Using the General Court's reasoning, this would suggest that the ex-employee wouldn’t be acting deceptively, particularly if it was well-known that the former employee was associated with the brand.

“That legal conclusion does not rest well with existing case law but also poses a complex issue for business is general,” said Engelman.

He questioned whether, as a precautionary measure, businesses should now require ex-employees of unincorporated associations to assign any IP rights that they may have in the name of the entity they worked for back to that entity.

For Simon Miles, head of IP at Edwin Coe and based in the firm’s London office, Engelman’s analogy seems to stretch the point somewhat.

Miles explained that the act complained of in the Deep Purple dispute is the filing of a trademark, adding that “it’s a bit of a stretch to extract this” to the analogy of a former employee selling branded goods.

While McLeod likes Engelman’s example, he believes that anyone starting to sell any goods under a company’s trademark in the UK would struggle to defend themselves against a passing off action.

“I think therefore that we have to take the barrister’s comments with a pinch of salt,” he concluded.

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More on this story

5 October 2018   The EU General Court dismissed three appeals yesterday in a trademark dispute between a member and a former member of English rock band Deep Purple.