Case No. EWHC-1798-(IPEC)

and Mick Clarke if I would join them to perform as The Rubettes featuring John Mick and Steve. I agreed to this. At this time Alan also wanted me to be in his new band together with John.”167.Mr Etherington’s oral evidence was that he continued to play alongside Mr Williams until September; that he continued to discuss possible future dates with Mr Williams until at least December 2018; and at that stage he still hoped that “things would work out”.168.Mr Richardson’s evidence was that there were various arguments among band members about payments and costs and that:“Alan told me that it was his intention to sack Mick from the band due to his ‘sticking up’ for himself … and his questioning of Alan with regard to finances. This was something that I tried to talk Alan out of. It was following his refusal of my efforts to keep this version of the band together that Alan wrote to Mick stating that he was disbanding the band and no longer required his services”. (Third witness statement of Mr Richardson, paragraph 5.)169.The evidence surrounding the events from March to December 2018 demonstrates many of the concerns discussed by Leggatt J in Credit Suisse.170.There is no credible evidence that Mr Williams or AWEL ceased to trade in 2018 or that any goodwill was abandoned at that stage. Even if the Defendants or some of them genuinely held that belief or have come to hold it subsequently, that belief was not founded in reality. The Claimants continued to trade as previously, albeit with a new line up, as had been the case many times in the past. The only evidence of intention to cease trading relied on by the Defendants is the 1 July email. That email does not bear the weight placed on it by the Defendants, even if their evidence as to their understanding of it were consistent.171.The events of 2018 do not establish that there was any abandonment by the Claimants of the goodwill that they owned whether at 1 July 2018, at some earlier meeting with the Defendants, or subsequently.Conclusion on Goodwill / issues 1 to 3.172.I conclude in the light of the above that the Claimants have established goodwill in the Rubettes Names from at least 1983. I also find that the Defendants do not have concurrent or senior goodwill. As at the relevant date (the autumn of 2018, when the Defendants began to look for work separately from the efforts of AWEL to promote a band), the Defendants had never carried on trade as ‘the Rubettes’ or any similar name with or without a suffix.PASSING OFF173.The legal test for passing off has been summarised briefly above. As suggested by that summary and by the authorities, I deal with the issues of misrepresentation and damage together.SubmissionsClaimants174.Mr Smith submitted that the Defendants’ conduct amounted to the classic case of passing off and that the Defendants had admitted the use of the name ‘the Rubettes’ in at least paragraph 34 of the Amended Defence. He also noted that, while the Defendants had attempted to resile from the admission in evidence and/or to blame third parties for any use of ‘the Rubettes’ alone, there had been no application to withdraw the admission. He submitted that, on the evidence, the admission was true and any change of case was untenable.175.As to misrepresentation, Mr Smith submitted that the use of ‘the Rubettes’ with or without the suffix ‘featuring John, Mick and Steve’ was a misrepresentation as:(i)either was clearly a badge of origin relying on the goodwill in ‘the Rubettes’;(ii)the only relevant business with goodwill in the word ‘the Rubettes’ is that of AWEL;(iii)the relevant public would associate the badge of origin with that business;(iv)it is immaterial whether the public knows the identity of the business supplying the goods and services to which the goodwill is attached;(v)the use of ‘the Rubettes’ or ‘the Rubettes featuring John, Mick and Steve’ represented the Defendants’ services as those of AWEL, or that there was some other business connection between them; and(vi)those representations are not true.176.Mr Smith accepted that it would not be a misrepresentation for the Defendants (or at least Mr Clarke and Mr Richardson) to describe themselves as original members of the Rubettes but argued that for them (or anyone) to use the name ‘the Rubettes’ as a badge of origin would be to misrepresent the existence of a connection with the owner of the goodwill in that badge. Mr Smith submitted orally that the misrepresentation is the same, even if the Claimants’ goodwill were to be associated only with ‘the Rubettes featuring Alan Williams’ and even if the Defendants had only ever used ‘the Rubettes featuring Mick, John and Steve’. He relied by way of analogy with McAlpine already discussed above, although he did not develop the analogy.177.As far as damage is concerned, Mr Smith submitted that any booking or sale made by the Defendants using a name including ‘the Rubettes’ is likely to be a lost sale for the Claimants as venues wishing to book ‘the Rubettes’ will not book multiple line ups trading under that name. He relied on evidence from Mr Williams that he had been told by a major promotor of 60’s and 70’s bands that the presence of Defendants’ band in the UK prevented him from promoting the band through which AWEL was trading. Mr Smith also relied on the likelihood that, even though the bookings made by AWEL for 2019 would have pre-dated the efforts of the Defendants to make bookings and would thus have been unaffected, any bookings made by the Defendants would have affected the opportunities for AWEL to make bookings at those venues or areas in future. That being so, Mr Smith submitted that the Claimants had already suffered damage and would continue to do.178.Finally, Mr Smith relies on the ‘instruments of deception’ doctrine in respect of certain domain names and the UK TM registered by Mr Clarke. Mr Smith submits that the doctrine is engaged by use of an ‘instrument’ – i.e. a domain or trade mark – if the use will lead to deception, and relies on Phones 4U at [36].Defendants179.Mr Colbey accepted in his opening skeleton that the Defendants had performed and described themselves as ‘the Rubettes’ as admitted in the Amended Defence. He noted that misrepresentation is a question of fact and that the use of the name ‘the Rubettes’ by the Defendants, particularly Mr Clarke and Mr Richardson will not mislead either the public or promotors such that their use of the name is likely to damage the Claimants’ goodwill or divert trade away from them. He submitted that in situations such as the present it is for the marketplace, rather than the courts, to determine which of multiple splinter bands from an original band is to be followed by fans of that band.180.This was particularly said to be the case in circumstances where the Claimants had traded as ‘the Rubettes featuring Alan Williams’ for many years and were contractually bound to continue doing so. In all the circumstances, Mr Colbey submitted that there is no misrepresentation likely to damage the Claimants’ goodwill arising from two original members of the Rubettes performing as ‘the Rubettes’. In the alternative, even if misrepresentation and damage arose from the use of ‘the Rubettes’ alone, that would be avoided by the Defendants adopting the same approach as that already agreed between Mr Williams and Mr Hurd, and trading only as ‘the Rubettes featuring Mick and John’ (on the basis that Mr Etherington has stated that he has no intention of performing in any Rubettes line up in future).181.Mr Colbey submitted that it was unclear until Mr Smith’s oral closing submissions that the Claimants sought to prevent the Defendants from using the label ‘the Rubettes featuring Mick and John’. In his submission, the Prayer for Relief dealt only with the use of ‘the Rubettes’ simpliciter or with other words denoting that the Defendants’ band was the official successor of the original (pre-1980) band and the Court should not permit that relief to be widened at this stage.182.In any event, Mr Colbey submitted that, following the 2002 Settlement Agreement, it is impossible for there to be any confusion between a band trading as ‘the Rubettes featuring Mick and John’ and one trading as ‘the Rubettes featuring Alan Williams’. It would be quite clear to promotors who is involved and no greater confusion would exist than already exists from the use of ‘the Rubettes featuring Bill Hurd’.Facts183.The evidence is that the Defendants have used the name ‘the Rubettes’ and there has been no serious attempt to deny this.184.The Defendants have promoted performances as ‘the Rubettes’ and have been involved in the creation of websites and social media accounts. The domain names registered by or on behalf of the Defendants include www.therealrubettes.com, www.theofficialrubettes.com and www.therubettes.co.uk. During cross-examination, Mr Clarke agreed that a Twitter account using the Twitter handle ‘@TheRubettes’ and an Instagram account called ‘@theRubettesofficial’ had been set up for him, remarking that “Someone set that up for me – said that we should have that”. Mr Clarke’s evidence about the domain name was less clear and he suggested that the domain names had been set up by a fan of the band rather than by him, but also said “I didn’t set it up someone did it for me”. The Amended Defence also pleads that, when asked by the Claimants’ solicitors to do so, the Defendants asked the fan in question to take the sites down and this was in fact done.185.In October 2018, Mr Clarke applied for a UK trade mark for the word mark ‘The Rubettes’. The application was in classes 9, 35 and 41. The application resulted in registration of the mark on 11 January 2019.186.There has been no disclosure by the Defendants of communications with the venues with which they sought to work or with whom bookings were made.187.The Claimants have provided evidence that promotors with whom they had been in discussion about bookings have chosen not to proceed owing to the activities of the Defendants. For example, the Claimants have put in evidence an email exchange from February this year with Live Promotions Events Limited. This exchange involves the possibility of bookings in the UK and comes to an end with the following email:“Alan the problem I can see as a UK promoter is that your former colleagues have reunited and are back on the scene … calling themselves THE RUBETTES (featuring three of the original members and are playing the Butlins, Warners budget circuit etc. Such issues just cause confusion … so I will pass … and wish you well. …”188.The Claimants have also provided evidence of questions being asked about the Claimants’ band now using ‘the Rubettes featuring Alan Williams’ while others who have been members of the band use simply ‘the Rubettes’. The email which has been disclosed states that this creates a hurdle when booking venues for concerts.Assessment189.Misrepresentation is a question of fact. The limited evidence available suggests that the use by the Defendants of ‘the Rubettes’ has caused both confusion and damage. It is not correct to say that simply because original members of a band seek to perform together they have a right to use the name of the band. As is clear from Byford v Oliver and similar cases relating to ‘successor’ bands the rights of band members will depend on the facts and on the legal qualification of those facts.190.Where goodwill in a name or names associated with a band has been accrued by a business over time, that goodwill may prevent others, even those with a previous connection to the band, from using those names as a badge of origin. In the leading Judgment in Reckitt & Colman v Borden, Lord Oliver observed: “The law of passing off can be summarised in one short general proposition—no man may pass off his goods as those of another.” (499 D-H). While the tort requires not only goodwill but also misrepresentation and damage, its basic purpose remains to protect the property in goodwill which has been established through trade.191.I have already held that AWEL has established goodwill in ‘the Rubettes’ such that the use by anyone else of that name is likely to lead third parties to believe that the use is connected with AWEL. It is clear from Reckitt & Colman v Borden that it is not necessary for the public to have any awareness of the particular identity of the owner of the goodwill as long as trade under the relevant name is identified with a particular source, in this case, ‘the Rubettes’ with AWEL.192.Mr Colbey referred me to the Judgment of Jacob LJ in Phones 4U on the question of when misrepresentation and damage are likely to occur. He argued that the actions of Mr Clarke and Mr Richardson could not be misleading, and thus a misrepresentation, because they were known as members of the Rubettes, and were performing as such and so there could be no confusion. Mr Colbey noted that the test for misrepresentation formulated by Jacob LJ is whether the conduct at issue “is really likely to be damaging to the claimant’s goodwill or divert trade from him.” [19].193.That Judgment does not assist the Defendants. As Mr Smith noted, Mr Clarke and Mr Richardson are at liberty to describe themselves as former members of the Rubettes. However, once they begin using the name ‘the Rubettes’ to trade, they are invading the Claimants’ goodwill in that name as those seeing the name would be likely to infer that there was some connection between their activities and the undertaking having goodwill in the name. In reaching this conclusion, I note the observation of Jacob LJ in Phones 4U on an important aspect of Lord Oliver’s judgment in Reckitt & Colman v Borden:“Lord Oliver does not limit damage to a particular sort of damage, particularly direct diversion of sales caused by misrepresentation. If that were so, passing off would fail in one of its key purposes – protection of the property in the goodwill. The books are full of cases where the action has succeeded where there has not been, and even could not be, direct loss by diversion of sales.” [11]194.In this instance, the involvement of the Defendants in registering domain names and other social media accounts and obtaining a trade mark using ‘the Rubettes’ support my view that they have engaged in passing off. This issue was also considered by Jacob LJ in Phones 4U where he said:“This court in British Telecommunications Plc v One in a Million Ltd [1999] FSR1 held that the registration of a domain name of a well-known company was an actionable passing off”. [27]195.Jacob LJ then quotes from the Judgment of Aldous LJ:“The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected to or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In a Million Limited and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc” (at page 23).196.A domain name (or names) in a distinctive name (‘the Rubettes’) was registered by someone having sufficient connection with the Defendants to take it down when requested to do so by them. The Defendants did not deny having knowledge of the domain name and Mr Clarke’s evidence suggested that it had been registered for him. The Defendants admit having used the name on other social media platforms.197.Mr Colbey’s arguments that fans would know that Mr Clarke and Mr Richardson were original band members may have been intended, at least in part, to suggest that those who looked at the domain or the Twitter feed or the Instagram account using the name ‘the Rubettes’ would know of Mr Clarke and Mr Richardson and of their connection with the band. While not put in these terms, the suggestion might be the situation is different from that in British Telecommunications Plc v One in a Million Ltd (where that company was unknown to the relevant public) and that the legal conclusion need not be the same as in that case.198.If that is the underlying thrust of Mr Colbey’s submissions, I do not accept that it is appropriate to distinguish that case. If anything, knowledge about the previous connection between Mr Clarke, Mr Richardson and the Rubettes would be more likely to lead interested parties to assume that there was some connection between their activities and the owner of the goodwill in the name. While, for the reasons set out above, Mr Clarke and Mr Richardson did not themselves accrue goodwill in ‘the Rubettes’ when performing with the bands promoted by AWEL and through which AWEL traded, those who were aware of the bands would be likely to conclude that activities using the name ‘the Rubettes’ involving some of the same personnel continued to be connected with the owner of the goodwill in that name.199.I conclude that the use by the Defendants of the word ‘Rubettes’ to signify the services that they supply is a misrepresentation. The Claimants have goodwill associated with that name and the use of it by others in trade as a badge of origin is a misrepresentation, likely to cause confusion as to their connection with AWEL’s business and, in the circumstances of this case, likely to cause damage to AWEL.200.The damage in question relates not only to the intrusion on AWEL’s goodwill, which is inherent in the registration of domain names, but also actual loss and damage caused by the unwillingness of promotors to book the Claimants’ band because of the Defendants’ activities.201.A potential issue arises in circumstances in which the Defendants have attempted to distinguish themselves from the Claimants’ band by using some form of words such as ‘the Rubettes featuring …’ and therefore to avoid confusion and misrepresentation.202.Mr Smith’s initial skeleton focussed exclusively on the use of ‘the Rubettes’ and the use of the Rubettes’ logo in the following form with a variety of background colours:203.As mentioned above, Mr Smith submitted during the hearing that attempts in the evidence to resile from the admission in the pleadings that ‘the Rubettes’ had been used by them could not succeed because there had been no application to withdraw the admission. He did not submit that any such change of case would have been futile (because ‘the Rubettes featuring …’ formulation would also infringe) but only that, on the evidence, it would have been untenable.Conclusion on Passing off – misrepresentation and damage (Issues 4 and 5)204.I have concluded that the Defendants have engaged in passing off by their admitted conduct and use of ‘the Rubettes’. 205.It is not necessary for me to resolve the issue of the potential alternative usage as a matter of liability and I am not persuaded that the pleading covers that alternative usage. Given the limited attention paid to this by counsel until closing submissions and the lack of submissions by either counsel as to the extent to which use by the Defendants of some distinguishing language would enable (or would have enabled) them to avoid any misrepresentation and/or damage, it would be difficult for me to deal with the issue at this point. I will hear submissions from counsel on this issue when the form of the final order is being settled.TRADE MARK ISSUES206.The Claimants’ case on the UK TM is under both section 5(4)(a) of the 1994 Act (that the Claimants were at the time of application entitled to prevent the use of the mark) and section 3(6)(a) (that the mark was applied for in bad faith).207.Counsel for both parties accepted that if the Claimants succeeded on the passing off claim then invalidity should follow under section 5(4)(a).208.The correct approach to section 3(6) is as set out in the propositions taken from Red Bull cited above at paragraph 78.SubmissionsClaimants209.The Claimants say that the test is met because: Mr Clarke was aware of the prior use of the Claimants’ signs; was interested in performing as ‘the Rubettes’ without Mr Williams’ involvement; intended to use the UK TM to pass himself off as the Claimants and to prevent the Claimants from exercising their rights (as manifested through the subsequent conduct of the Defendants); and that this is sufficient to satisfy the requirements of bad faith for the purpose of section 3(6), being, in essence, that the conduct should fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced business persons in the music industry.210.Mr Smith submitted that the following facts supported the Claimants’ case:•Mr Clarke applied for the UK TM on 24 October 2018, just as Mr Williams moved to Australia. Mr Clarke had been putting together his own band before that date without discussing this with Mr Williams. He did not discuss his intention to register the trade mark with Mr Williams.•Contrary to Mr Clarke’s suggestion about his motivation during cross-examination, it was not necessary to have a trade mark for ‘the Rubettes’ to work and his motivation was not to protect against unlawful use. Mr Smith noted that there was no evidence of any threat of unlawful use at any time; and that the only use to which the UK TM has been put was to threaten venues which had a relationship with the Claimants’ band.211.Mr Smith relied on correspondence with the Plowright Theatre which made strong allegations of trade mark infringement. In addition, Mr Smith submitted that during his evidence Mr Clarke had given a clearly false account about that correspondence, asserting that he was complaining about use of his image when the letter was demonstrably about trade mark infringement only. In the circumstances, it was said that such evidence was discreditable and consistent only with bad faith.Defendants212.The principal ground on which Mr Colbey resisted a finding under section 3(6)(a) was that the Claimants are currently contractually prevented from using ‘the Rubettes’. His submissions on this point were extremely brief, but appeared to be directed towards Mr Clarke’s understanding of the Claimants’ rights and interests in ‘the Rubettes’.213.Mr Colbey also relied on the 1 July email which, in his submission, gave Mr Clarke no reason to believe that Mr Williams would still perform as ‘the Rubettes’. His overall submission was that, seen in that context, Mr Clarke’s conduct did not meet the standard set out by Arnold J in Red Bull as it was not proven to the requisite standard that Mr Clarke knew that his behaviour was unacceptable by the standards of reasonable persons carrying on business.Facts and evidence214.Red Bull makes clear it is a serious matter to allege that a trade mark has been registered in bad faith and that any such finding must be solidly grounded, with a presumption that those registering trademarks have acted in good faith. Jacob LJ suggested that the allegation is such that the evidence relied on to establish it must be cogent. He confirmed that the standard of proof is the balance of probabilities.215.In assessing the good faith or otherwise of someone applying for a trade mark (which is to be assessed as at the date of the application), it is permissible to have regard to evidence later than the date of the application if that evidence casts light back on the position at the relevant date.216.In considering the evidence, I also have in mind the well-known comments of Males LJ in Bank St Petersburg PJSC & Anor v Arkhangelsky [2020] EWCA Civ 408:“In general it is legitimate and conventional, and a fair starting point, that fraud and dishonesty are inherently improbable, such that cogent evidence is required for their proof. But that is because, other things being equal, people do not usually act dishonestly, and it can be no more than a starting point. Ultimately, the only question is whether it has been proved that the occurrence of the fact in issue, in this case dishonesty…, was more probable than not.” [117]217.With those principles in mind, the relevant evidence, and the factual findings which flow from it are set out below. This requires a certain amount of reconsideration of issues which have already been considered, in view of the different legal context.Timing and Mr Williams’ knowledge218.There is no dispute that the UK TM was applied for on 24 October 2018.219.Mr Clarke’s written evidence is that the formation of his band began at latest during the summer of 2018. This is corroborated by Mr Etherington’s written evidence that he was asked shortly after July 2018 by Mr Clarke and Mr Richardson if he would join them in a band which was not the Claimants’ band.220.There is some dispute in the evidence whether Mr Clarke (or any of the other Defendants) told Mr Williams about the formation of the new band.221.Mr Williams’ initial evidence was that the Defendants had asked him whether they could continue as ‘their own Rubettes’ and that he had said they could not.222.The Amended Defence denies that the Defendants made any such request, denies that Mr Williams said he would return for future concerts with the band, and asserts that Mr Williams told the Defendants that he was disbanding the band.223.Mr Clarke’s first witness statement says that “At some stage between April and July 2018, it is my understanding that John told Alan that John, Steve and I would continue to perform as the Rubettes without him.” This was not corroborated by the written evidence of Mr Richardson. Mr Richardson’s oral evidence was that he had originally intended to remain with Mr Williams’ band and support him in his future efforts but subsequently changed his mind. Both Mr Richardson and Mr Etherington gave oral evidence that they did not tell Mr Williams about Mr Clarke’s plan to form a new band in the period between July 2018 and October 2018.224.Mr Clarke’s oral evidence was that, during a meeting at Mr Clarke’s house in July, he had told Mr Williams’ about his plans, and that Mr Williams did not say that he was planning to come back to perform in gigs. Mr Clarke acknowledged that this was not in his written evidence.225.The evidence about events during the meeting at Mr Clarke’s house in or around July 2018 is not entirely clear, which is unsurprising given the time that has passed and the various intervening events, including this litigation. However, as discussed further below, it is significantly more likely than not that the focus of that meeting was primarily on financial issues, rather than Mr Williams’ move to Australia.226.Mr Richardson stated that Mr Clarke “did not have Alan’s ear” after July so that discussions between them were not likely.227.Mr Clarke did not claim to have told Mr Williams at any point about the trade mark registration. When asked about it during cross-examination, he reiterated that as far as he was concerned Mr Williams had gone to Australia to retire.228.Mr Williams’ conduct after the spring of 2018 does not suggest that he understood that Mr Clarke (or any of the Defendants) planned to set up an alternative band.229.Weighing up all the evidence, it is unlikely that Mr Clarke told Mr Williams of his plans, or that Mr Williams was aware of them. His evidence that Mr Williams was informed of Mr Clarke’s intention to start a new band by Mr Richardson is not supported by any other evidence, including that of Mr Richardson. In the circumstances, I consider it more likely that there was some discussion during the spring of 2018 of the possibility that the Defendants might perform as the Rubettes without Mr Williams when Mr Williams was in Australia, but that Mr Williams was not in favour of such a plan, and did not take that discussion as a serious proposal to start a new band without his involvement.Mr Clarke’s motivations for registering the trade mark230.Mr Clarke’s evidence was that he registered the UK TM “simply to protect the name of the Rubettes”. During cross-examination he stated that it had been suggested to him (he did not say by whom) that registration of the mark would give his new band protection and that it would be necessary to have it in order to work. Mr Clarke accepted that it had never previously been necessary to have a trade mark and that there was no evidence of any third party threat (i.e. other than from the Claimants).231.Mr Clarke’s written evidence is: “At no time in the summer of 2018 or otherwise have I or any member of TRFJMS attempted to prevent TRFAW from performing any live performance in the UK, Europe or otherwise. This is despite being the registered owner of the UK trademark The Rubettes in Nice classes 9, 35 and 41. A copy of the UK trademark registration can be found at Exhibit MCI page 3.” This evidence is not consistent with subsequent events or with his oral evidence.232.Mr Clarke accepted under cross-examination that letters had been sent by him or on his behalf to venues which were working with the Claimants’ band or advertising future performances. Mr Clarke stated that he and the other Defendants were concerned that the Claimants’ band was using their image to advertise its performances. When Mr Smith asked whether the motivation for writing the letters was to stop the Claimants’ band, Mr Clarke disagreed, saying that the Defendants were happy for Mr Williams to continue to work; were trying to stop him from using their image; were simply trying to find some basis on which the Defendants could work; and would be happy if the Claimants simply changed their advertising.233.Only one such letter was available for review. It was disclosed by the Claimants. That letter is in email form. It is dated 15 May 2019 and appears to have been sent to SMG Europe Holdings Limited (‘SMG’) from an email account [email protected]. It is signed:“The RubettesJohn Richardson - Original member and Founder of the Rubettes/Original Drummer