Case No. EWHC-1798-(IPEC)

1.The claim relates to the name ‘the Rubettes’ which was first used by a pop band in 1974.2.The First Claimant (‘AWEL’) was incorporated in March 1976. It is owned and controlled by the Second Claimant (Mr Williams) and his wife. They are the sole shareholders. Mr Williams and the First and Second Defendants (Mr Clarke and Mr Richardson respectively) were all involved with the original band known as the Rubettes at around the time of the band’s formation or during its initial period of success. The Third Defendant (Mr Etherington) began performing with the other parties at a later date.3.In summary, the Claimants’ pleaded case is that:•AWEL (or AWEL and Mr Williams) is the owner of goodwill in the name ‘the Rubettes’ and in the name ‘the Rubettes featuring Alan Williams’ (the ‘Rubettes Names’) when used in relation to live music events, merchandising, music sales and associated goods and services such that when used in relation to those goods and services they denote goods and services authorised by one or both of the Claimants; and•none of the Defendants owns any goodwill associated with the name ‘the Rubettes’.4.The Claimants’ principal claim is that since late 2018 the Defendants’ involvement in a band using, or being promoted under, the name ‘the Rubettes’ amounts to passing off.5.In addition, the Claimants plead that Mr Clarke’s application for a trade mark for the word mark ‘the Rubettes’ in October 2018 (subsequently granted in January 2019):•was made in bad faith contrary to section 3(6) of the Trade Marks Act 1994 (‘the 1994 Act’);•was in contravention of section 5(4)(a) of the 1994 Act; and•the UK registered trade mark in classes 9, 35 and 41 for the word mark ‘The Rubettes’ (the ‘UK TM’) is consequently invalid under section 47(1) of the 1994 Act.6.The Defendants’ case is, in summary, that there was no agreement as to how the goodwill generated by the band should be owned and that the goodwill was therefore owned by the members of the band jointly and severally.