Case No. EWHC-1798-(IPEC)

238.Mr Clarke’s oral evidence was that he read the 1 July email as meaning that Mr Williams intended to disband the band entirely. The relevant sentence reads: “I am disbanding my present band line up as of now and as a result I must inform you that your services will no longer be required.” During cross-examination, Mr Clarke said that he had reached his view in the light of Mr Williams having told the band members that he would be moving to Australia once he received his residents’ permit. Mr Clarke said that when he received the email he thought that the band would be coming to an end. He also explained that he continued to perform with the band until September 2018, although he noted that AWEL had also employed additional musicians for the performances in August and September 2018.239.Mr Clarke’s written evidence did not address his understanding of the 1 July email in great detail. The paragraph dealing with it states:“The band The Rubettes featuring John, Mick and Steve (“TRFJMS”) began following the disbanding of the second Claimant’s band The Rubettes featuring Alan Williams (“TRFAW”) in the summer of 2018. Alan Williams wrote to me by email on 1 June 2018 stating that he was disbanding his present band line up and as a result my services would no longer be required.”240.Mr Williams’ written evidence was that the 1 July email was sent in the context of a dispute with Mr Clarke (in particular) about money and not in the context of his forthcoming change of residence to Australia (which according to both Mr Clarke and Mr Etherington had already been discussed with the others in the spring of 2018). Mr Williams’ evidence was that he had offered an increased session fee, which was not accepted by Mr Clarke and that, as a result of this, he sent the email to Mr Clarke. He did not send it to either of the others (both of whom had accepted the increased session fee). Mr Williams notes that Mr Clarke in fact performed at the band’s remaining shows in 2018 at the fee previously agreed.241.During cross-examination, Mr Williams testified that his email to Mr Clarke was intended to be a polite way of saying that Mr Clarke was no longer needed. He explained that he had not explicitly said that he would be carrying on with others as Mr Clarke would have understood that to be the case given that it had happened many times before. When asked whether the email was sufficient to have led Mr Clarke to believe that Mr Williams and AWEL had given up any claim to ‘the Rubettes’ and were disbanding the band, Mr Williams said that was most unlikely as the others were continuing to perform and Mr Clarke was very aware that the band was carrying on and that Mr Williams was intending to change the line-up.242.Mr Richardson’s written evidence was that:“At paragraph 108 AWAS, Alan sets out that he was forced to replace Mick Clarke effectively due to financial demands from him for more money. This is not what actually happened, as I have previously set out in my second Witness Statement there were a number of arguments between various persons with regard to costs and payments. Alan told me that it was intention to sack Mick from the band due to his “sticking up” for himself and other band members (in light of Alan’s treatment of others) 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.”243.In the light of the above, I do not accept Mr Clarke’s evidence that he understood the events of 2018 and, in particular, the 1 July email as meaning that Mr Williams was disbanding the Claimants’ band and retiring. While all of the evidence about this period lacks precision (in particular as to exact dates, which is unsurprising given the time that has passed), Mr Clarke’s version of events in his oral evidence, which was subsequently relied on by Mr Colbey in submissions, expands significantly on his written evidence and is not supported by the evidence of the other witnesses.244.The surrounding circumstances include the fact that the email was written only to Mr Clarke, and is agreed by Mr Williams and Mr Richardson to have followed a disagreement about financial matters. There is some dispute as to the exact nature of the financial dispute, with Mr Williams focussing on session fees, and Messrs Richardson and Etherington focussing on the fees charged by AWEL to promotors, about which it is said that there was a significant disagreement.245.Notwithstanding the differing accounts of the issues discussed, the evidence on balance suggests strongly that the principal topic of the meeting was financial. In the light of this evidence, I conclude that Mr Clarke’s most recent evidence as to his understanding of the 1 July email is, at best, significantly tainted by hindsight. I do not accept, on the balance of probabilities, that Mr Clarke believed that Mr Williams was abandoning the Rubettes, disbanding the band and retiring to Australia.Assessment246.A court considering whether an application to register a trade mark is made in bad faith is concerned to avoid two main potential types of abuse: the first against the registry; and the second against third parties. The abuse alleged here is against the Claimants. The allegation is that Mr Clarke applied for the UK TM to interfere with the lawful activities of Mr Williams and AWEL. In determining whether Mr Clarke acted in bad faith, it is necessary to assess the situation in the round and consider whether the evidence establishes on the balance of probabilities that Mr Clarke sought to do what has been alleged and, if so, whether his conduct falls short of the standards of acceptable commercial behaviour in the music industry.247.As mentioned above, I have carefully considered Mr Clarke’s evidence, both written and oral, as to what he knew and what he intended. I regret that I have found that evidence to be unsatisfactory. Mr Clarke’s evidence was internally contradictory and undermined by the evidence of the other Defendants. Mr Clarke’s evidence shifted over time, and his version of events was not supported by any contemporaneous documentary evidence, or by the overall context. Finally, the credibility of his account of his motivations was undermined by his own subsequent conduct. With that overall assessment of the evidence in mind, I find that:•Mr Clarke was well aware of the activities over many years of AWEL and Mr Williams;•Mr Clarke did not have a genuine belief that AWEL and Mr Williams were abandoning their business in the UK;•Mr Clarke did not tell either AWEL nor Alan Williams of his plans to set up a further competing band or to register the UK TM;•Mr Clarke had no reasonable grounds to believe that the UK TM was necessary to enable him to work, or that there was any unconnected third party use against which the mark might be legitimate protection;•once obtained, the mark was used to interfere with the activities of AWEL and Mr Williams by writing to venues working with AWEL and Mr Williams, relying on the UK TM and raising the prospect of litigation;•Mr Clarke’s explanations of that correspondence during cross-examination were completely new evidence; and•the combination of that correspondence and Mr Clarke’s unconvincing evidence, combined with his failure to mention that correspondence in his written evidence, cast light on his intentions at the date of application.248.It follows that I do not accept Mr Colbey’s submission that the Defendants never sought to interfere with the Claimants’ business, nor that Mr Clarke’s motive in registering the mark was to protect his interest from unlawful usage.249.I also conclude that it is irrelevant that there is a contractual arrangement under which the Claimants have agreed to trade only as ‘the Rubettes featuring Alan Williams’. Mr Colbey acknowledged in his skeleton that this was not something that Mr Clarke purports to have had in mind when registering the UK TM. That acknowledgment was wise and is amply demonstrated to have been accurate by the later evidence of Mr Clarke’s use of the UK TM in his correspondence with SMG. The email from SMG to Alan Williams sending him the copy of the email which was later disclosed by the Claimants states: “On your advice we are advertising the show as ‘The Rubettes featuring Alan Williams.’ You can see for yourself at our website”. It is clear that it made no difference to Mr Clarke that the Claimants’ band was using the style it had agreed with Mr Hurd.250.In short, the facts which I have found support Mr Smith’s position. Mr Clarke’s application was not motivated by an interest in protecting against unlawful use. It was motivated by an intent to interfere with the Claimants’ legitimate conduct in a context where there was no reasonable basis to believe that those interests were being abandoned, and the UK TM was subsequently exercised so as to interfere with the Claimants’ business. Mr Clarke’s conduct in applying for the UK TM falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the music business.