Winston’s counterclaim
.The passing off claim – Winston’s use of the Luv Injection name14.I will deal first with Ian’s claim that Winston’s use of the Luv Injection name amounts to passing off. This was based on Ian’s claim to be the owner of the goodwill in the name Luv Injection. In this regard, it is worth saying something of the relevant law as explained by Laddie J in Saxon Trade mark: Byford v Oliver [2003] EWHC 295.15.Saxon was a dispute between former members of the heavy metal band of that name. Mr Byford, Mr Dawson and Mr Oliver had played under the name Saxon from the late 1970s until 1985, when Mr Dawson left and was replaced by another musician. Later, in 1995, Mr Oliver left and he too was replaced by another musician. On both occasions, the remaining members (including Mr Byford) continued to perform under the Saxon name. Later, however, Mr Dawson and Mr Oliver were registered as proprietors of Saxon as a trade mark. The issue before Laddie J was Mr Byford’s appeal in his application to invalidate that registration. In his judgment, Laddie J. made a number of points which are of importance in cases like the present. 16.First, Laddie J found that, on the facts in Saxon, the three individuals had operated as a partnership at will. As such, whilst they all had an interest in the partnership assets (which included the goodwill in the name Saxon), it was the partnership that owned those assets. The partners’ right, when the partnership was dissolved (which, Laddie J found, had been on the departure of Mr Dawson in 1985), was to ask for the partnership assets to be realised and divided up between them (see at [19]). 17.Secondly, Laddie J considered how the law would operate where, after a band operating as a partnership had split up, another band started performing under the same name. He explained that the second band would not thereby acquire the goodwill that the first band already had in that name. Rather, the second band might acquire its own separate goodwill in the name. However, unless the first band had somehow abandoned its goodwill or acquiesced in the activities of the second band, the second band was always liable to be sued in passing off by or on behalf of the partners in the first band (see at [25]).18.Third, Laddie J pointed out that the position was no different where some (even a majority) of the members of the first band had become members of the second band (see at [26]).19.This is all highly relevant to the present case. It explains why (despite whatever claims may have been made in the past), it is now common ground (a) that the members of Luv Injection 1 had operated as a partnership at will, (b) that that partnership had been dissolved when the split occurred in October 2016 and (c) that, as at that date, the goodwill in the name Luv Injection was owned by the partners of Luv Injection 1. This is all consistent with Saxon.20.The evidence shows that, after the split, Luv Injection 3 (Winston’s new group) was the first group to start performing using the Luv Injection name. As a result, it was vulnerable to being sued by the partners of Luv Injection 1. However, it was not vulnerable to being sued by the partners of Luv Injection 2 (Ian’s new group) for the simple reason that Luv Injection 2 was not then in existence. On this basis, as at the relevant date (when Luv Injection 3 started using the Luv Injection name), the Luv Injection 2 had no protectable goodwill in the name and there could have been no misrepresentation that Luv Injection 3 was in any way connected to Luv Injection 2.21.On this basis, as is accepted by Mr Wood, any action against Luv Injection 3 must be based on the goodwill of Luv Injection 1. It is for this reason that Ian claims that he has “appropriated” that goodwill. As that word suggests, the case that Mr Wood puts forward on behalf of Ian is not that there has been any transfer from the Luv Injection 1 partnership to Ian. Instead, he argues that the issue as to where goodwill lies is an issue of fact and that, as a matter of fact, Ian (and Billy) were and always had been the public face of Luv Injection (its front of house). On this basis, he argues that by continuing to perform as Luv Injection, the goodwill simply attached itself to them. Effectively, they had appropriated it. In my judgment, there is absolutely no substance in this argument and, for the reasons set out below, I have no hesitation in rejecting it. 22.It is rightly common ground that, as a matter of fact, the goodwill of Luv Injection 1 had been owned by the partners of Luv Injection 1, including Winston. Mr Wood’s point that Ian was “one of the front men for more than 30 years alongside [Billy] and Mr Little” is therefore irrelevant. The goodwill in the name accrued to and, as at October 2016, was owned by the Luv Injection 1 partnership. This has been conclusively determined in the earlier phases of the litigation between the parties. 23.Ian’s claim must, therefore, rest on the fact that Ian and Billy were still front of house when they started performing as Luv Injection 2. However, as is clear from the analysis of Laddie J summarised above, whilst that might be relevant to who (as a matter of fact) owned the goodwill in Luv Injection 2, it would not and could not affect the ownership of the already existing goodwill in Luv Injection 1.24.I cannot see how the fact that Ian and Billy performed as front of house in Luv Injection 2 could possibly be said to have resulted in goodwill actually owned by the partners of Luv Injection 1 becoming vested instead in Ian, or in Ian and Billy, or in the members of Luv Injection 2. Mr Wood’s case was that the goodwill (i.e. a form of property) had been appropriated. However, where property is owned by someone, another person cannot generally acquire title to that property simply by appropriating it. Generally, there would have to be some form of transfer by the owner to that other person either by way of an agreement or by operation of law. The position is no different where the property is goodwill and where the owner is a partnership and the other person is one of the partners. It seems to me that Mr Wood’s submissions are akin to saying that if you take someone’s car and use it in such a way that third parties believe that it is your car, then there has been a transfer of ownership to you from the real owner. Outside the area of adverse possession in relation to real property and in the absence of abandonment of property by the former owner, I am not aware of any principle of law which would have this result. 25.Mr Wood argued that appropriation or even, he said, misappropriation was a means by which goodwill could pass without a formal transfer and he suggested that this was the very basis for an action in passing off. It seems to me that this is completely misconceived. The action for passing off is intended to prevent a defendant causing damage to another person’s property (the goodwill) by means of a misrepresentation. I cannot see any basis on which it can be said to have led to a transfer of that very property.26.On the issue of abandonment, there was a suggestion in Ian’s pleadings that Winston had somehow abandoned his interest in the goodwill owned by Luv Injection 1 by not actively seeking to realise his share in the assets of that partnership (see paragraph 7 of the Re-Amended Particulars of Claim and paragraph 10 of the Reply). If this was an argument relied on by Ian (and, to be fair, it was not something that Mr Wood referred to in his submissions), then I reject it.27.Whilst in Saxon (at [27]-[28]) it was held that Mr Dawson had abandoned any interest that he had had in the goodwill in the Saxon name, that was because more than 12 years had passed since he had left the group and during that time he had done nothing to suggest that he had any interest in the name. In contrast, in the present case, Winston had continued using the name after the split and without any break. Indeed, before the Court of Appeal handed down its judgment, it was Winston’s case that he was the sole owner of the name. He may have been wrong in that, but it makes it difficult to argue that he intended to abandon such rights as he did have in the name. I was not taken to any evidence that Winston had ever said or done anything to suggest that he intended such an abandonment. 28.On his basis, I have no hesitation in rejecting Ian’s passing off claim based on Winston’s use of the Luv Injection name since the split. Trade mark revocation claim29.For the same reasons, Ian’s claim to invalidate Winston’s trade mark must fail. As appears from the judgment of Lewison LJ at an earlier stage of these proceedings (at see [2021] EWCA Civ 732 at [9]-[10]), it is only the person who is the proprietor of an earlier right within the meaning of s.5(4)(a) of the Trade Marks Act 1994 who can seek to have a mark declared invalid under s.47(2)(b). For the reasons set out above, Ian is not such a person. The dub plate claim30.I turn now to Ian’s passing off claims concerning the dub plates. Passing off based on the goodwill of Luv Injection 1 or of Billy31.For the reasons set out above, I do not think that Ian personally has any claim insofar as any use of a dub plate by Luv Injection 3 might lead members of the public to believe that Luv Injection 3 was the same group as Luv Injection 1. Even I was satisfied that such use involved a misrepresentation and gave rise to damage (as to which I make no finding), any cause of action in that respect would lie with the Luv Injection 1 partnership, not with Ian. 32.Similarly, I cannot see that Ian has any cause of action insofar as Winston has used a dub plate that refers to Billy.Passing off based on Ian’s goodwill33.An alternative claim which is raised in paragraph 30 of Ian’s Re-Amended Particulars of Claim is that use by Injection 3 of a dub plate that refers to Luv Injection before the split would constitute passing off because it involves a misrepresentation that Ian (as a member of Luv Injection 1) was connected with Luv Injection 3. This claim was not referred to in Mr Wood’s Skeleton Argument and, for the reasons set out below, I reject it.34.First, as Mr Hicks submitted, for Ian to succeed in this alternative claim, Ian would have to establish that there was goodwill attaching to his name personally. This was not pleaded and even if it had been, there was no evidence to support it. The only evidence of trading activities by Ian in the relevant period was as a member of Luv Injection 1. I do not accept that this gave rise to relevant and separate goodwill in his name. Without goodwill in his name, this alternative claim would fail.35.Secondly, even if Ian could establish goodwill in his own name, to succeed, Ian would have to establish that Winston’s use of such dub plates would mislead people into believing that Ian was connected with Luv Injection 3. There are a number of difficulties with this:a.As Mr Hicks submitted, Ian has not produced any evidence of a particular dub plate being played by Winston which is said to constitute passing off. Indeed, the only examples of dub plates that I was shown were the Country Road and the Sanchez dub plates1 and the only evidence of use of these was use by Ian, not by Winston. In effect, I am being asked to infer that use by Winston of a dub plate mentioning Luv Injection would amount to a misrepresentation. The difficulty with this is that, whilst Winston seems to accept that he uses dub plates that were created before the split and that refer to Luv Injection, the question whether such use would amount to a misrepresentation must depend on the precise circumstances. As Mr Mignott said, Luv Injection 3 may well be playing before an audience that is well aware of the split and that Ian is not associated with Luv Injection 3. Further, as Winston pointed out, confusion may be avoided by means of the fliers and other publicity material, or by introductions used for a particular event, or simply by seeing that Ian was not one of those on stage at the event. b.Mr Mignott’s evidence was that he was not aware of anyone actually being confused. Indeed, the only evidence of confusion before me was in some forum posts from 2019 where comments were made such as “where my bro Corporal Billy?”, “where is General Billy”, “Corporal Billy the original barrier missing”, and “hard to listen to luv injection without coral Billy”. I do not see how this helps Ian. In the first place, none of these refer to him. Secondly, the writer of the last comment (and maybe of the penultimate comment) does not seem to be confused. Finally, there is no evidence that such confusion as might have arisen had been caused by the use of a dub plate referring to Luv Injection.c.In any event, if Luv Injection 3 was to play a dub plate that had been created before the split and referred simply to “Luv Injection”, I do not think listeners would take that as a representation that a particular pre-split member of Luv Injection (here Ian) was involved in Luv Injection 3. It seems to me that the likelihood is that it would simply be taken to be referring to the group performing, i.e. to Luv Injection 3.36.Some of these objections also apply to a passing claim based on Winston’s use of a dub plate that expressly refers to Ian (i.e. as “Zukie” or “King Zukie”). Again, it is unclear that Ian would have separate goodwill in his own name to support a passing off claim and, again, there is no evidence of any particular actual use of such a dub plate let alone of any actual confusion. A further point that applies to this claim is that it is difficult for Ian to argue that use of a dub plate made before the split and that refers to a member of the group by name is a misrepresentation, given that the Sanchez dub plate played by Ian’s Luv Injection 2 at an event on 5 March 2022 refers to “the Mexican anywhere you are” (i.e. to Winston) as well as to “King Zukie” and Billy. In cross examination, when asked what his objection would be to Winston playing this dub plate given that he, Ian, was happy to use it, Ian’s response was that it was different because “Winston is not a performer. He is just a manager. But he’s part of the sound”. This made no sense to me.37.In these circumstances, I am unable to make a finding that there has been any act of passing off or that there is a threat of passing off and I reject Ian’s passing off claim insofar as it is based on the use of dub plates recorded before the split. I should note that I make no findings as to the ownership of the various dub plates. As Mr Wood submitted, the issue of ownership of the dub plates is largely irrelevant to the passing off issue before me, although it is likely to arise in relation to Winston’s counterclaim.Winston’s counterclaim38.I turn, finally, to that counterclaim. This is for an order that the Luv Injection 1 partnership be wound up in accordance with s.35 of the Partnership Act 1890 and for associated relief.39.The parties to this action agree that the affairs of the Luv Injection 2 partnership need to be wound up and its assets distributed. However, they were also agreed that the counterclaim would have to be adjourned so that the various third parties who might have an interest in the Luv Injection 1 partnership can be notified and given the chance to be joined. I agree that this that would be a sensible course given that there may well be contentious issues to be resolved – such as the nature of the partnership assets as well as the issue of who the actual partners were. For that reason, I will grant no relief in relation to the counterclaim at present but will ask the parties to propose directions for its future resolution.