EU court sets record straight on ‘Commodores’ TM dispute
Two members of American soul group the Commodores suffered a defeat in a trademark dispute over the band’s name after the EU General Court ruled in favour of founding member Thomas McClary’s Fifth Avenue Entertainment.
The decision was issued yesterday, December 6, in Luxembourg. The court overturned a decision of the European Union Intellectual Property Office (EUIPO) that had rejected Fifth Avenue’s registration of the name ‘The Commodores’ as a trademark.
Former Commodores guitarist McClary is the CEO of Fifth Avenue, which has been embroiled in trademark litigation with Commodore Entertainment since 2014.
McClary was an original founding member of the band in 1968, along with William King, Walter Orange and others. McClary stopped performing regularly with the group in 1984, while King and Orange have continued to tour under the Commodores name.
Fifth Avenue filed an application with the EUIPO to register ‘The Commodores’ trademark in October 2014. The name had previously been unregistered in the jurisdiction. The trademark application included the Commodores’ catalogue of recorded music, music videos and filmed live performances, as well as the right to perform under that name. The trademark was granted that same month.
Commodore Entertainment, run by King and Orange, opposed the trademark, but this opposition was dismissed by the Opposition Division of the EUIPO in May 2016.
The latest dispute arose after the EUIPO Fifth Board of Appeal overturned that decision, annulling Fifth Avenue’s registration of the trademark ‘The Commodores’.
Fifth Avenue then appealed to the General Court, which found in favour of the company, reversing the EUIPO’s ruling and ordering the EUIPO to bear legal costs.
In its ruling, the General Court found that an agreement signed by band members in 1978, which assigned ownership of their rights to a predecessor of King’s and Orange’s company, expired seven years later.
The court found that while the Board of Appeal had “referred to a number of relevant clauses from that agreement, it did not examine the effect resulting from the expiry of its validity”. On this basis, the Board of Appeal’s decision was unlawful, the court said.
The Commodores had a string of hit singles throughout the 1970s and 80s, including “Three Times a Lady”, “Still”, and “Nightshift”, the latter winning a Grammy Award in 1986. Former lead singer Lionel Richie enjoyed a successful solo career after leaving the group in 1983.
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